*  Legal conclusions from non-lawyer employees of an accused infringer are not admissions suitable for summary judgment.

L&W sued Shertech for declaratory judgment of patent invalidity, non-infringement, and inequitable conduct at the U.S. District Court for the Eastern District of Michigan.  Judge John Omeara found infringement by Shertech after Shertech witnesses admitted that their accused products embody related claim elements described in their own patent application.  Both sides appealed various issues.

The Federal Circuit vacated the infringement finding because the “several general statements” by the witnesses “lack the specificity necessary” to establish infringement.

This case focused on extensive witness testimony.  Good selection and preparation of expert witnesses can be critical for proving facts of infringement.

Planet Bingo, LLC and Gary Weingardt v. Gametech International, Inc. et al.

*  A patent drafter should choose claim terms carefully and describe alternative embodiments for such terms.

Bingo sued Gametech at the U.S. District Court for the Eastern District of Michigan for allegedly infringing claims to a bingo game method that “establishes a predetermined combination [e.g. color] as a winning combination” for a progressive jackpot pool.  Judge Philip Pro agreed with Gametech that Gametech’s  accused method, which sets “extra winning combinations only after drawing the first bingo ball,” does not infringe.  Bingo appealed to the Federal Circuit.

The Federal Circuit affirmed no literal infringement and no infringement under the doctrine of equivalents.  The court pointed out that a patentee who “had a clear opportunity to negotiate broader terms but did not do so…must bear the cost of its failure to seek protection.” 

A patent drafter should try to anticipate how competitors may design around an invention, and include such details in the disclosure for clarity. 

DSU Medical Corporation et al. v. JMS Co., Ltd., ITL Corporation PTY, LTD. et al.

*  Inducement of infringement under 35 USC 271(b) requires proof that the accused “actively and knowingly aid[ed] and abet[ed] another’s  direct infringement.”

DSU sued JMS, a Japanese medical supply business and ITL, a maker of syringe needle guards for JMS, at the U.S. District Court for the Northern District of California for infringing DSU’s patent claims to a plastic needle guard.  A jury awarded over $5,000,000 damages for infringement against JMS and Judge Lowell Jensen found non-contributory infringement by ITL.  DSU, JMS and ITL appealed various holdings to the Federal Circuit.

A Federal Circuit panel affirmed.  The court en banc reviewed whether “specific intent and action to induce infringement” was proven by the plaintiff, after a concern was raised about conflicting precedent from earlier decisions.  The court explained that under the “inducement rule” a party is “liable for the resulting acts of infringement by third parties” if  the “entity offers a product with the object of promoting its use to infringe, as shown by clear expression or other affirmative steps taken to foster infringement” such “as advertising an infringing use or instructing how to engage in an infringing use…”  In this case, ITL escaped contributory infringement by producing evidence that ITL believed that its product did not infringe.

This case reaffirms that a plaintiff must prove direct infringement, no substantial non-infringing uses of the supplied product, knowledge of the asserted patent, and intent, in order to win an inducement of infringement case.

Ventana Medical Systems, Inc. v. Biogenex Laboratories, Inc.

*  “[T]he doctrine of prosecution disclaimer generally does not apply when the claim term in the descendent patent uses different language.”

Ventana sued Biogenex at the U.S. District Court for the District of Arizona for allegedly infringing claims to a diagnostic test method for “dispensing” reagent onto microscope slides.  Judge Raner Collins construed the claim term “dispensing”  to mean “direct dispensing” directly “from the reagent container.”  Ventana stipulated to a judgment of non-infringement and appealed to the Federal Circuit for a more favorable claim interpretation that would cover Biogenex’s product.

The Federal Circuit construed the term “dispensing” more broadly and vacated the non-infringement judgment.  The Federal Circuit explained that prosecution history arguments about a similar term in an ancestor application “will generally not limit different claim language in a continuation application.”  Judge Lourie dissented with a view that “direct dispensing is the essence of the invention” and the claims should be limited to this essence as revealed in the specification.

This litigation was complicated by an extensive prosecution history of multiple continuation applications from a common specification that emphasized one specific mode of operation.  In the more restrictive claim construction world following the Philips decision, patent drafters should assist litigators of their patents by including alternative (broadening) descriptions for claim terms.

Eli Lilly et al. v. Zenith Goldline Pharmaceuticals,  Inc. et al.

*  “[M]ere identification in the prior art of each component of a composition does not show that the combination as a whole …. is obvious.”

Eli sued Zenith at the U.S. District Court for the Southern District of Indiana for allegedly infringing a patent to a pharmaceutical, after Zenith filed an Abbreviated New Drug Application at the FDA for a generic version of the claimed compound.  Judge Richard Young found the patent valid and not infringed, and Eli appealed to the Federal Circuit.

The Federal Circuit affirmed after reviewing invalidity arguments and finding that a small (one atom) difference in the compound that led to improved safety was not obvious.  Statements by others led away from making the compound with one atom different, prompting the court to explain that “one would have to depart from the teaching of the (prior art) article and recombine the components …with hindsight.”

The patentee’s success in withstanding invalidity attacks was based partly on a showing of unexpected results linked to small differences from the prior art.

Sanofi-Synthelabo et al. v. Apotex, Inc. and Apotex Corp.

*  A generic disclosure to a genus of compounds without class-wide salt preferences does not anticipate a salt complex of the compound.

This preliminary injunction case capped a long negotiation between drug generic maker Apotex and Sanofi, over Apotex’s entry into Sanofi’s market for Plavix™, which is used to prevent heart attacks and strokes.  Judge Sidney Stein at the U.S. District Court for the Southern District of New York granted Sanofi a preliminary injunction after Apotex failed to establish a likelihood of proving invalidity of Sanofi’s patent claims to the bisulfate salt of the right handed chiral form of the active ingredient.  Apotex appealed.

The Federal Circuit affirmed after failing to find clear error or other fault in the district court’s four factor analysis used to decide the preliminary injunction.  Most arguments concerned whether prior art disclosure of racemic mixtures (left and right handed forms) of the compound without bisulfate could invalidate the claims.  The bisulfate salt complex yielded surprising results and was not described in the prior art.

The strongest invalidity argument stemmed from a prior art patent that had been considered by the patent office.  The court commented that this “makes Apotex’s burden of proving invalidity at trial ‘especially difficult.’”

 “[T]he specification …[u]usually …is the single best guide to the meaning of a disputed claim.”

Abraxis obtained a patent claiming a more stable formulation of the anaesthetic Diprivan ™ as a salt with “edentate.”  Abraxis sued Mayne at the U.S. District Court for the Southern District of New York for infringement after Mayne filed an Abbreviated New Drug Application at the Food and Drug Administration for the same drug but made as a calcium salt that is similar to “edentate.”  Judge William Pauley interpreted the claim term “edentate” broadly to include “compounds structurally related,” such as the calcium complex used by Mayne, and found literal infringement and infringement under the doctrine of equivalents.  Mayne appealed to the Federal Circuit.

 The Federal Circuit interpreted the term “edentate” narrowly, based on the specification disclosure that “listed several derivatives of EDTA” of which “none are structural analogs.”  (EDTA is a common metal binding compound found in shampoo etc.).  From this definition, the Federal Circuit reversed literal infringement but maintained infringement under the doctrine of equivalents because Mayne’s calcium salt had similar structure and effect.

 When defining a new claim term such as “edentate,” a practitioner should include a wide variety of examples, because a court might not travel outside the specification to determine the term’s meaning.  Interestingly, the doctrine of equivalents saved the day for the patentee, who proved equivalence with the accused product.  In this regard, Abraxis elicited helpful testimony from Mayne’s formulator, who “noted that” Mayne’s accused product is “is structurally similar to edentate, product stability is predicted to be unaffected.”

The U.S. District Court for the Northern District of California requires “early disclosure of infringement and invalidity contentions” and requires amendments “to be filed with diligence” during litigation.

 O2 sued Monolithic at the U.S. District Court for the Northern District of California for allegedly infringing claims to a circuit that converts computer battery voltage into AC voltage for fluorescent screen lighting.  O2 properly served preliminary infringement contentions to Monolithic within 10 days of the initial case management conference but tried to amend those contentions more than 3 months after discovering another infringement theory from a deposition.  This was well after a 30 day time limit from the claim construction ruling.  The court refused to accept the belated amended infringement contention as “unreasonably delayed” and granted summary judgment of non-infringement.  O2 appealed to the Federal Circuit.

 The Federal Circuit affirmed because the Northern California litigation rules were not unreasonable, stating that “[d]ecisions enforcing local rules in patent cases will be affirmed unless clearly unreasonable, arbitrary, or fanciful; based on erroneous conclusions of law; clearly erroneous; or unsupported by any evidence.”

 The Northern District of California has convenient rules that require early disclosure of alleged infringement facts and patent defense theories such as prior art allegations.  These rules are taken seriously.   
 

A “full inquiry” into functionality of a design patent requires questioning whether “alternative designs would adversely affect the utility of the specified article.”

 PHG sued St. John at the U.S. District Court for the Middle District of Tennessee for allegedly infringing design patents for medical label sheets.  Judge Robert Echols granted a preliminary injunction after deciding that the arrangement of medical records on a single sheet was “primarily ornamental because there are other ways to arrange different sizes of labels…”  St. John appealed to the Federal Circuit.

 The Federal Circuit reversed because the district court failed to provide an “explicit finding…whether the alleged alternatives are in fact functionally equivalent.”  The court pointed out that a specific “ornamental” arrangement of medical records on a sheet of paper may allow easier removal of specific records from the page bottom, which raises a substantial validity question.

Design patents by definition are trivially easy to design around and are less helpful protection for a product that is not based on a fanciful design.

 “The enablement requirement for prior art to anticipate under section 102 does not require utility, unlike the enablement requirement for patents under section 112.”

“When a reference discloses a class of compounds, i.e., a genus, a person of ordinary skill in the art should be able to ‘at once envisage each member of th[e] … class’ for the individual compounds, i.e., species, to be enabled.”

Impax sued Aventis at the U.S. District Court for the District of Delaware for declaratory judgment of no infringement and invalidity of Aventis’s drug patent after Impax filed an Abbreviated New Drug Application.  Judge Joseph Farnan Jr. found claims not invalid as anticipated over a prior art that described the drug compound within a much larger group and an earlier reference that did not even teach medical usefulness of the disclosed compounds.  Impax appealed to the Federal Circuit.

 A Federal Circuit panel majority affirmed no anticipation by the earlier reference because of the large number of compounds included with no specific identification of the drug.  However, the court vacated the no anticipation holding from the later reference because such “reference does not have to be effective to be enabling.”  Judge Rader dissented from this second holding on the basis that the later reference “does not even make a suggestion of disclosure” of the compound and cannot anticipate. 

 Enablement for an anticipating reference differs from that needed to obtain a patent, but determining this difference remains difficult, especially for a use invention that requires appreciation of an effect.

 “A case raising a federal patent law defense does not for that reason alone, ‘arise under’ patent law” and does not provide a district court jurisdiction.

Robert discussed his folder software with Microsoft and later sued Microsoft in a Michigan state court for alleged unjust enrichment after Microsoft filed a related patent application.  Microsoft removed the case to the U.S. District Court for the Eastern District of Michigan where Judge Arthur Tarnow dismissed the claim.  Thompson appealed to the Federal Circuit.

The Federal Circuit asked both sides to address whether the case “arises under” patent law as contemplated in 28 USC 1338.  The Federal Circuit decided that the case does not “necessarily” depend “on resolution of a substantial question of federal patent law” and therefore directed a transfer of their appeal to the U.S. Court of Appeals for the Sixth Circuit.

Oftentimes a patent issue is raised in defense or is a component of a state law issue.  However, a district court may lack jurisdiction if the case does not “necessarily depend on resolution” of the patent issue.

Primos, Inc. v. Hunter’s Specialties, Inc. et al.

Decided June 14, 2006 

Judge Lourie with Judges Newman and Prost

*     "Prosecution history estoppel does not apply" when an "amendment was merely tangential to the contested element in the accused device."

Primos sued Hunter’s at the U.S. District Court for the Northern District of Iowa for alleged infringement of patent claims to an animal call device that is inserted against the roof of the mouth. Judge John Jarvey found that certain claim amendments did not preclude application of the doctrine of equivalents. A jury found literal infringement, infringement under the doctrine of equivalents, willfulness and inducement of infringement. Hunter’s appealed.

The Federal Circuit affirmed all holdings. An amendment that had added the term "having a length" (referring to a plate held inside the mouth) to an asserted claim did not create estoppel because "all physical objects have a length." A further term added to describe the plate as "differentially spaced" also did not estop the doctrine of equivalents because the accused device used a "dome" instead of a plate.

The Federal Circuit took a narrow view of file history estoppel in this case. The court started with the presumption that the surrender only covers "the territory between the original claim limitation and the amended claim limitation" and then examined the "rationale" for the claim amendment for further narrowing.

Panduit Corporation v. Hellermanntyton Corporation

Decided June 15, 2006

Judge Linn with Judges Michel and Gajarsa

*     "Settlement agreements …reflect an agreement by hostile litigants on more than just contract terms" and are construed strictly.

Panduit sued Hellermanntyton at the U.S. District Court for the Northern District of Illinois for allegedly infringing patent claims to an electrical power box having defined projections and openings. The parties soon executed a settlement agreement wherein Hellermanntyton agreed not to make or sell any product that includes a device identified as part number MCR-SEB. Hellermanntyton sold a modified product and Panduit sued Hellermanntyton for breach of agreement. Judge Harry Leinenweber granted Hellermanntyton summary judgment of no breach because the modified product no longer used part number MCR-SEB.

Panduit appealed to the Federal Circuit, which affirmed because "there is no question that the accused product is not Part No. MCR-SEB." The court explained that settlement agreements result from "careful negotiation," are similar to consent agreements, and should not be easily challenged.

Patent rights in a settlement agreement should be reviewed by a patent attorney with experience in claim construction to prevent surprises such as those experienced in this case.

M2 Software, Inc. v. M2 Communications, Inc.

Decided June 7, 2006

Judge Mayer with Judges Bryson and Prost

*     Trademark confusion is less likely, even for virtually identical trademarks, when the marks are directed to "separate and distinct" industries.

M2 Software, which owns the trademark "M2" for the film and music industries, opposed M2 Communications’ registration for the mark "M2 Communications" for the health, pharmacy and medicine fields. The PTO Trademark Trial and Appeal Board dismissed the opposition because "any overlap between the parties’ prospective purchasers or channels of trade is de minimis."

M2 Communications appealed to the Federal Circuit, which affirmed because "[t]he unrelated nature of the parties’ goods and their different purchasers and channels of trade are factors that weigh heavily against M2 Software." The court further pointed out that "[i]t is difficult to establish likelihood of confusion in the absence of overlap as to either factor."

M2 Software was first to register the mark "M2" but had only registered for the music entertainment fields. A trademark registrant should seriously consider paying the extra money and registering for additional commercial fields, if there is concern about others using the mark in different trade channels of interest.

Xerox Corporation v. 3Com Corporation et al.

Decided June 8, 2006

Judge Bryson with Judges Newman and Rader

*     A claim is not indefinite when the specification provides "a general guideline and examples sufficient to enable a person of ordinary skill in the art to determine whether" the "claim limitation is satisfied."

Xerox sued 3Com at the U.S. District Court for the Western District of N.Y. for allegedly infringing claims to a handwriting recognition method that interprets "unistroke symbols" that are separated in "sloppiness space." Judge Michael Telesca granted 3Com summary judgment of invalidity partly because certain claims that recite the term "sloppiness" are indefinite. Xerox appealed to the Federal Circuit.

The Federal Circuit reversed, noting that "the specification explicitly defines symbols that are well separated from each other in sloppiness space." And, while "not rigorously precise" such was "adequate guidance…in light of the difficulty of articulating a more exact standard for the concept."

This was a second appeal from summary judgment after a district court had construed claim terms for a difficult to describe technology (computer analysis of hand writing). When introducing new terms in this situation, a practitioner should be as explicit as possible and provide examples of term use.

Liquid Dynamics Corporation v. Vaughan Company, Inc.

Decided June 1, 2006
Judge Gajarsa with Judges Dyk and Prost

*    Computer modeling studies may be accepted into evidence if "based on reliable scientific methodology and subject to cross examination."

Liquid sued Vaughan at the U.S. District Court for the Northern District of Illinois for alledged infringement of claims to a septic tank apparatus that keeps the material stirred with minimal force. A jury found the claims willfully infringed and awarded damages. Vaughan appealed to the Federal Circuit.

The Federal Circuit affirmed, in a fact based decision that found that the jury reasonably inferred from an engineering manual and testimony that the defendant’s installations infringed, based on less than complete data. The infringement analysis focused on use of computer simulations to determine whether operating parameters of installed tanks and pumps infringed the complicated claims, which recited "substantially helical flow path…traveling outwardly" and other parameters. The Federal Circuit noted that the plaintiff’s expert "models were not the perfect models" but also pointed out that the expert’s "analysis has been previously recognized in the scientific community and has been recognized as reliable by at least one circuit."

Some patent claims recite parameters that are not easily measured but require computer modeling to determine. Modeling algorithms and software should be added to a patent specification in such cases to simplify nailing an infringer during patent enforcement.

PACTIV Corporation v. Dow Chemical Company

Decided June 5, 2006

Judge Dyk with Judges Michel and Bryson

*    An agreement term that reserves "the right to litigate a claim that would otherwise be barred by res judicata…..must be express."

Pactiv and Dow settled patent litigation with a "Settlement and License Agreement." But Pactiv later stopped royalty payments and filed a declaratory judgment action at the U.S. District Court for the Northern District of New York, asserting patent invalidity and noninfringement. Judge David Hurd found that the declaratory judgement action was barred by the prior adjudication and dismissed. Pactiv appealed.

The Federal Circuit affirmed because Pactiv had a full and fair opportunity to litigate the patent in the earlier action, and "parties can expressly reserve the right to later litigate an issue" in a settlement agreement, but such reservation must be "manifest" in "a clearly recognizable manner." The parties’ Settlement and License Agreement did not include an explicit right to challenge the patents.

Courts construe litigation settlements strictly.

Sharp Kabushiki Kaisha v. Thinksharp, Inc.

Decided May 30, 2006

Judge Newman with Judges Lourie and Schall

*    A trademark applicant is "not required to litigate (two trademark) oppositions in order to preserve the right to litigate one" and can abandon an application without res judicata to the other.

This case concerns a procedural issue of whether a trademark applicant can abandon a trademark application without prejudicing a related application. ThinkSharp filed a first workmark application for "THINKSHARP" and a second application for "THINKSHARP" with a design in the field of educational goods and services, at the USPTO. Sharp Corporation of Japan opposed both applications and ThinkSharp abandoned its latter application. Sharp then argued that the ensuing default judgment for the second application operated as res judicata to preclude ThinkSharp from prevailing against Sharp’s opposition to the first workmark application. The PTO Trademark Trial and Appeal Board disagreed and dismissed Sharp’s remaining opposition.

Sharp appealed to the Federal Circuit, which affirmed, noting that "[i]t is highly relevant that the default judgment on the word-and-design mark was entered without consideration on the merits." Res judicata does not block a relitigation of the same claim or issue in this case because "issues of likelihood of confusion and dilution were not litigated in the defaulted opposition."

Liquid Dynamics Corporation v. Vaughan Company, Inc.

Decided June 1, 2006
Judge Gajarsa with Judges Dyk and Prost

*           Computer modeling studies may be accepted into evidence if “based on reliable scientific methodology and subject to cross examination.”

Liquid sued Vaughan at the U.S. District Court for the Northern District of Illinois for alledged infringement of claims to a septic tank apparatus that keeps the material stirred with minimal force.  A jury found the claims willfully infringed and awarded damages,  Vaughan appealed to the Federal Circuit. 

The Federal Circuit affirmed, in a very fact based, complicated decision that found that the jury reasonably inferred from an engineering manual and testimony that the defendant’s installations infringed, based on less than complete data.  A big part of the infringement analysis was the use of computer simulations to determine whether operating parameters of installed tanks and pumps infringed the complicated claims, which recited “substantially helical flow path…traveling outwardly” and other parameters.  The Federal Circuit noted that the plaintiff’s expert “models were not the perfect models” but also pointed out that the expert’s “CFD analysis has been previously recognized in the scientific community and has been recognized as reliable by at least one circuit.”

Some patent claims recite parameters that are not easily measured observed directly but require computer modeling to determine.  Such modeling algorithms and software should be added to a patent specification to simplify nailing an infringer during patent enforcement.

*           “[T]he scope and boundary of claims is set by the patentee’s description of his invention,” which may include a “material distinction from the prior art”.

On Demand sued Ingram at the U.S. District Court for the Eastern District of Missouri for alleged infringement of method claims that recite the use of “sales information” for making books for a consumer.  Judge Mary Medler construed “sales information” broadly, which covered the accused method.  A jury found infringement from this definition and awarded damages.  On Demand appealed to the Federal Circuit.

The Federal Circuit, once again citing the 2005 Phillips decision, relied on comparative statements in the specification about prior art to construe the asserted claims narrowly, finding that “sales information” must include some “promotional information.”  This narrower construction prompted the Federal Circuit to vacate the district court’s infringement and damages holdings.

After Phillips, a court no longer can rely solely on clear, unambiguous English in the claims for interpretation.  A court routinely looks for statements in the specification (and file history) regarding the purpose and use of an invention as well as stated comparisons with prior art.  Let the writer beware.

Old Town Canoe Company v. Confluence Holdings Corp.

*           A patent applicant may not be “entitled to a claim construction divorced from the context of the written description and prosecution history.”

Old sued Confluence at the U.S. District Court for the District of Oregon for allegedly infringing claims to methods of making molded canoes via opening the mold “after coalescence” of melted particles “is completed.”  Judge Donald Ashmanskas granted summary judgment of no infringement after 5 days of trial because “completion” of coalescence of particles in the process required that no bubbles remain, whereas the accused process leaves bubbles. 

Old appealed to the Federal Circuit, arguing that the district court “wrongfully imposed” a narrow claim construction based on the specification, but the Federal Circuit affirmed no infringement, commenting that “Old Town is not entitled to a claim construction divorced from the context of the written description and prosecution history.”  The Federal Circuit also noted expert evidence and vacated the district court’s grant of judgment as a matter of law of no invalidity, enablement, and no best mode violation.  Judge Mayer agreed with the non-infringement holding but dissented to argue that such non-infringement mooted the remaining issues.

Old lost its infringement case because Old’s patent specification statements narrowed the claims by extolling the virtues of “complete” finishing of a claimed industrial process.  On remand, Old now has to defend charges of violating best mode, because the inventor gave the attorney a document that described process details, which were not written into the specification.

Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc.

*           A specification that characterizes a “very important feature” to achieve an aim of the invention may limit the claims to that feature.

Inpro sued T-Mobile at the U.S. District Court for the District of Delaware for alleged infringement of claims to a credit card sized PDA that has a “host interface.”  Judge Gregory Sleet construed “host interface” narrowly to mean “a direct parallel bus interface” based on statements in the specification that exalted the use of this particular type of host interface to overcome a “big drawback” of prior designs.  From this construction and others, Inpro stipulated that it could not prove infringement, the court entered final judgment of invalidity, and Inpro appealed.

The Federal Circuit affirmed, despite Incyte’s doctrine of claim differentiation argument based on recitation of “parallel bus interface” in narrower, dependent claims.   The Federal Circuit explained that a specification, which describes a lone embodiment that overcomes a specific problem in the prior art, can overcome claim differentiation, which otherwise can broaden an independent claim.   Judge Newman wrote a second concurring opinion, which complained that other claim construction issues should have been included in the interests of economy. 

A practitioner should not over-characterize a prior art problem versus an inventive solution.  A court may interpret such description as teaching the gist of an invention, and rely on this comparison to narrow the claims.

Parental Guide of Texas, Inc., v. Thomson, Inc.

*           An agreement that “expressly refers to the patent statute, 35 U.S.C. 284” may include court awarded damages determined using the Georgia Pacific factors.

Thompson agreed to pay Parental a “contingent fee based on a “litigation royalty” if Parental obtained a “favorable termination” from another defendant from their continuing patent lawsuit at the U.S. District Court for the Eastern District of Texas.  Thompson’s agreement specified that the royalty be determined under law 35 U.S.C. 284, which directs a court to determine infringement damages.  The litigation settled via a payment under Federal Rule 68 instead however, and Thompson refused to pay the agreed contingent fee because Rule 68 damages are determined by a defendant, not by the court.  Parental appealed to the Federal Circuit.

The Federal Circuit affirmed because damages determination by a court under 284 (following case law rules) differs from a defendant’s determination under Federal Rule 68.  A defendant’s agreement to pay a specific amount under Federal Rule 68, if not accepted within 10 days, obligates the plaintiff to pay costs if a court finds for a higher amount. 

*           Claims are to be interpreted “in the context of the entire patent, including the specification.”

This appeal came from the Southern District of New York, after Judge Thomas Griesa tersely construed a software claim that recites “distributing” and “displaying” a financial trade order as covering only a “whole combined order book.”  Lava had stipulated final judgment of non-infringement under this undesirable claim construction and the court certified that at least one claim was ready for appeal under Rule 54(b). 

The Federal Circuit, once again citing the Phillips claim construction case and referring to embodiments in the specification, construed the claims more broadly, set aside the district court’s claim construction and remanded.  The claims had employed simple English to describe a software invention but the specification included examples that poked outside the meaning arrived at by the district court.  Such good patent drafting of broad embodiments thus helped prevent narrow claim construction during litigation.

As seen here, the Federal Circuit can review district court claim construction at an early stage.  A dissenting Judge Mayer however, argued that the Federal Circuit should not have accepted this case, because of “the interrelatedness of the infringement claim and the unresolved unenforceability counterclaim.” 

Energizer Holdings, Inc. et al. v. International Trade Commission et al.

*           “Claims (are) indefinite only if reasonable efforts at claim construction prove futile.”

Eveready attacked Chinese competitors at the International Trade Commission (“ITC”) for allegedly infringing Eveready’s patent claims to a low mercury alkaline battery having a “said zinc electrode.”  The ITC held all claims invalid for indefiniteness under 35 U.S.C. 112(2) because the term “said zinc anode” lacked antecedent basis and because test parameters recited in the claims implied that product must be tested in order to infringe.  Eveready appealed to the Federal Circuit.

The Federal Circuit reversed the invalidity holding with the comment that “a claim is not indefinite because it is hard to construe” and the scope of Eveready’s claims “would be reasonably ascertainable by those skilled in the art.”

The Federal Circuit used common sense in overlooking simple patent drafting errors that a litigation opponent had pounced upon to prove invalidity.   To prevent such expensive problems, good, proper English must be used when drafting or translating claims.  A practitioner should not rely on the poor English of patent office examiners.

Atofina v. Great Lakes Chemical Corporation

Decided March 23, 2006

Judge Lourie with Judges Rader and Dyk,  Dyk dissenting in part

*           An earlier genus prior art disclosure of 100 to 500 degrees does not anticipate a narrower species of 330 to 450 degrees.

Atofina sued Great at the U.S. District Court for the District of Delaware for allegedly infringing claims to an organic synthesis method that uses a catalyst between 330 and 450 degrees.  Judge Sue Robinson concluded that a prior art Japanese patent disclosed the same temperature and catalyst conditions but that Atofina misled the examiner by not providing a complete translation with these facts to the PTO.  The judge deemed the claims anticipated by the reference and found inequitable conduct.  Atofina appealed to the Federal Circuit.

The Federal Circuit reversed because “it is well established that the disclosure of a genus in the prior art is not necessarily a disclosure of every species that is a member of that genus.”  Judge Dyk partly dissented with a view that the district court should reevaluate inequitable conduct on the remand rather then drop this issue. 

Many inventions arise as discoveries of narrow optimum conditions for carrying out a broader method.   How to claim the border between a patentably distinct species and a larger genus in the prior art can be problematic, however.  The Federal Circuit suggested that the patentee in this case may have narrowed his claimed range more than needed to get around the art, and an accused infringer did not literally infringe the amended range.

Wilson Sporting Goods Company v. Hillerich & Bradsby Co.

Decided March 23, 2006

Judge Rader with Judges Lourie and Bryson

*           “[A] trial court may refer to the accused product or process” to help focus on “issues of the breadth of the claim construction analysis and the most useful terms.”

Wilson sued Hillerich at the U.S. District Court for the Northern District of California for allegedly infringing claims to a baseball bat that has a “gap” forming “insert,” which Judge Ruben Castillo further characterized as “rigid.”  The court granted summary judgment of non-infringement from this narrow definition and Wilson appealed.

The Federal Circuit complained that the record lacked a description of the accused device, and that the added condition of “rigid” seemed to come out of nowhere.  The court explained that knowledge of the accused device can assist claim interpretation.  Furthermore, the district had erred by construing the claim term “gap,” the same way among various claims, despite the existence of claim words that modify the size of “gap.”  The court noted that “the context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms.”

This case teaches that details of an accused device may set the stage for determining fighting points in claim construction and should not be overlooked.

Breckenridge Pharmaceutical, Inc. v. Metabolite Laboratories, Inc, and Pamlab, L.L.C.

Decided April 7, 2006

Judge Michel with Judges Friedman and Linn

*           Personal jurisdiction for declaratory judgment under federal law requires more than the sending of “cease and desist letters” to a suspected infringer.

The Federal Circuit addressed in this case the “need in the district courts for clearer guidance” on the “issue” of what is needed, beyond a warning letter, to establish personal jurisdiction for a declaratory judgment against a patentee.  Breckenridge sued Metabolite at the Southern District of Florida for declaratory judgment of non-infringement after Metabolite sent warning letters to Breckenridge’s customers over patented methods of controlling heart disease that recite consuming a vitamin concoction.  Judge James Cohn dismissed for lack of personal jurisdiction because Metabolite merely had sent letters to Florida customers of Breckenridge.  Breckenridge appealed to the Federal Circuit.

The Federal Circuit reversed, because, although warning letters do not establish jurisdiction, an exclusive licensee with the right to sue under the patents had conducted business in Florida. 

Exposing a patentee to personal jurisdiction from a declaratory judgment action in a distant state is a hazard when sending a warning letter to a suspected infringer in the state.  A patentee should remember that granting the right to sue may increase this kind of jurisdiction exposure.

Semitool, Inc. v. Dynamic Micro Systems Semiconductor Equipment GMBH

Decided April 6, 2005

Judge Prost with Judges Linn and Dyk

*           Litigants can adopt a district court claim construction for settlement and the Federal Circuit will interpret the construction with regular intrinsic evidence.

Semitool and Dynamic executed a settlement agreement during patent litigation at the U.S. District Court for the Northern District of California.  The agreement adopted Judge William Alsup’s claim construction and explicitly retained the court’s jurisdiction over future enforcement.  Later, Semitool charged that Dynamic’s new products infringed and the district court granted summary judgment of non-infringement.  Semitool appealed to the Federal Circuit.

The Federal Circuit followed contract law and interpreted the contested term “processing chamber” from the district court’s Final Claim Construction Order using “the standard tools of claim construction.”  The Federal Circuit interpreted the term narrowly, and affirmed.  The Federal Circuit cited the Philips decision and the court’s reliance on specification statements that loosely “treats processing bowl, processing chamber and processing vessel synonymously.” 

The Philips case principle of strong reliance on the specification for claim construction appears to have bitten this patentee, who might have distinguished the terms used in the claims more strongly during patent drafting of the specification. 

Microchip Technology Incorporated v. The Chamberlain Group, Inc.

Decided March 15, 2006
Judge Lourie with Judges Rader and Linn

*           A concern that customers may be sued for infringement does not satisfy the “reasonable apprehension” test to establish jurisdiction for a declaratory judgment action against a patentee.

Microchip sued Chamberlain at the U.S. District Court for the District of Arizona for declaratory judgment that Chamberlain’s patent claims to garage door openers with self-learning security code software are invalid and non-infringed by Microchip’s customers.  Judge Susan Bolton held the claims invalid and infringed.  Chamberlain appealed to the Federal Circuit.

The Federal Circuit vacated and instructed the district court to dismiss because Microchip had no “adverse legal interest” to support jurisdiction.   The Federal Circuit explained that Microchips “economic interest alone (in customers who purchased chips for door openers), … cannot form the basis of an ‘actual controversy’ under the Declaratory Judgment Act.” 

Initiating or avoiding legal confrontation over patent rights requires knowledge of what it takes to establish jurisdiction for declaratory judgment.  Having a customer sued over use of your product is not enough to establish jurisdiction.  The Federal Circuit pointed out that a seller can establish jurisdiction if the seller is “potentially an inducer of infringement and it indemnified its customer against liability as well.”

Harold Schoenhaus and Richard M. Jay  v. Genesco, Inc. and Johnston & Murphy, Inc.

Decided March 15, 2006
Judge Michel with Judges Gajarsa and Linn

*           “[T]he same terms appearing in different portions of the claims should be given the same meaning unless …the specification and prosecution history” indicate otherwise.

Harold sued Genesco at the U.S. District Court for the Eastern District of Pennsylvania for alleged infringement of claim 1 of Harold’s patent to an “orthontic device” that is “rigid” and slips into a shoe to prevent fallen arches.  Judge Louis Pollak concluded that the recited “rigid” properties must be present in the insert alone, and found no infringement because the accused device relies on a combination of shoe with insert for the rigidity.  Harold appealed.

The Federal Circuit affirmed.  The court found that Harold’s specification broadly described the “invention” as both an insert and an insert-shoe combination with the recited property, but that claim 2, which recites the same “rigidity” term as claim 1, can only cover the insert by itself.   The specification and prosecution history did not clearly teach that the word “rigid” has both meanings and the claims could only be read consistently by following the narrow meaning.

Patent specifications often are loaded with inconsistent statements that describe an invention as broadly as possible.  Sloppy, inconsistent English is less acceptable in the claims, however and can bite the owner during litigation.

Dr. Tassilo Bonzel v. Pfizer, Inc. and Boston Scientific Scimed, Inc. et al.
Decided March 2, 2006
Judge Newman with Judges Lourie and Rader

*           Under the Paris Convention a court must “give equal treatment to nationals of other nations” but does not have to “receive litigation that it reasonably believes would be better conducted in another nation…”

Bonzel executed a German patent license agreement in Germany using German law.   Boston purchased the licensee as part of a larger deal.  Bonzel then sued Boston and the original licensee parent (Pfizer) at the U.S. District Court for the District of Minnesota on the grounds that the sale settled infringement litigation, in which Bonzel had an interest through the license.  Judge Ann Montgomery however dismissed the case with leave to refile in Germany, because Bonzel had no basis for federal jurisdiction.

The Federal Circuit agreed with the district court that Bonzel “requires contract interpretation and application under German law” and thus “a German court is a more appropriate forum.”

This case bounced from a district court to a state court and then back to the district court before the appeal to the Federal Circuit.  The state court however, agreed to hear the case if a German court were not available.

Lawman Armor Corporation v. Winner International, LLC and Winner Holding LLC
Decided February 22, 2006
Judge Friedman with Judges Michel and Dyk

*           The point of novelty test, which focuses design patent infringement determination on differences of a patented design from prior art, does not acknowledge a combination of the differences itself as novel.

Lawman sued Winner at the U.S. District Court for the Eastern District of Pennsylvania for alleged infringement of Lawman’s design patent claims to a steering lock.  Judge Robert Kelly evaluated infringement under the two part test of: 1) ordinary observer test of whether the patented design as a whole is substantially the same as the accused design; and 2) point of novelty test to determine if the accused device appropriates the patented novelty, which distinguishes the design over the prior art.  The court found that all points of novelty were found in the prior art, over protestations from Lawman that the combination of points itself is novel, and granted Winner summary judgment of non-infringement.  Lawman appealed.

The Federal Circuit affirmed, noting that “[t]he purpose of the ‘points of novelty’ approach …is to focus on those aspects of a design which render the design different from prior art designs” and Lawman’s argument would stand this test “on its head.”

The design patentee-plaintiff in this case mixed utility patent law (103 obviousness) with design patent principles when wielding his design patent.  Utility patents generally are more useful than design patents, which can be designed around more easily.

Curtiss-Wright Flow Control Corp. v. Velan, Inc.

Decided February 15, 2006

Judge Rader with Judges Friedman and Dyk

*           A specification provides “context and substantial guidance” for claim interpretation and allows claims to use “different terms to define the exact same subject matter.”

Curtiss obtained a preliminary injunction against Velan at the U.S. District Court for the Western District of Texas.  Judge Orlando Garcia broadly construed Curtiss’s patent claims to a petroleum refinery “coke drum” as having an “adjustable” part, which covers Velan’s device.  Velan appealed.

The Federal Circuit noted that the specification “extols” the claimed adjustment as a “critical” point that alleviates manual adjustments but that a broad meaning of “adjustable” is not supported “in the overall context” of the specification.  The Federal Circuit held that the district court erred by construing this claim too broad and vacated the injunction.

Interestingly, the district court had relied on claim differentiation to broaden the meaning of an independent claim (recitation of an extra condition for the term in a dependent claim).  But the Federal Circuit found that absolute statements (mostly in the background section of the specification that disparaged the prior art) clarified this term and overcame claim differentiation, stating “claim drafters can also use different terms to define the exact same subject matter.”   A practitioner must be careful not to strictly over compare an invention with prior art.  In the wake of the Philips decision, the specification has more influence for interpreting claims.

Ferring B.V. and Aventis Pharmaceuticals, Inc. v. Barr Laboratories, Inc.
Decided February 15, 2006
Judge Dyk with Judges Mayer and Newman, Newman dissenting

*           An applicant that does not submit “objective evidence” when requested by a PTO examiner may be engaging in inequitable conduct.

Ferring energetically prosecuted patent application claims to a diuretic peptide in a suitable composition “for absorption in the gastrointestinal tract” over killer prior art that described use of the same peptide for “peroral” administration.  The inventors argued that “peroral” merely refers to absorption by the mouth and not by the gastrointestinal tract.  The examiner did not believe this and “suggested that applicants obtain evidence from a non-inventor.”  The inventors subsequently filed nine declarations but never revealed that many of the declarations were from former employees or paid consultants.  During patent litigation against Barr at the U.S. District Court for the Southern District of N.Y., Judge Charles Brieant found these facts sufficient for an inequitable conduct finding on summary judgment.  Ferring appealed.

The Federal Circuit affirmed, stating that “a declarant’s prior relationships with the patent applicant may be material, that failure to disclose such relationships to the examiner may constitute inequitable conduct.”  Ominously, the Federal Circuit pointed out with apparent disapproval that an inventor admitted that he gave two declarants “a draft declaration” and told one “what he should describe in the affidavit.”  Newman dissented, arguing that the law has come “to demand a perfection that few could obtain in the complexities of patent practice.” 

A summary judgment decision of inequitable conduct is unusual but reflects a dim view by the courts towards patent applicants who game the system at the patent office.  In particular, practitioners should reveal the appearance of bias when submitting declarations.

Albert Hazelquist v. Guchi Moochie Tackle Company, Inc. and Ken Yamaguchi

Decided February 9,  2006

Judge Clevenger with Judges Lourie and Bryson

*           “[E]ach act of patent infringement gives rise to a separate cause of action.”

Albert sued Guchi and his fishing tackle company at the U.S. District Court for the Western District of Washington for allegedly infringing a fishing lure design patent.  Guchi stayed the litigation by declaring bankruptcy and Albert attempted to block dismissal of his litigation after Guchi admitted continued infringement following the bankruptcy.  Judge Ricardo Martinez dismissed anyway, and Albert appealed to the Federal Circuit.

The Federal Circuit reversed the dismissal because “a discharge in bankruptcy operates as an injunction…..only…to causes of action that arose or could have been commenced prior to filing for bankruptcy…”

This case is a reminder that each infringing act is a separate independent ground for infringement litigation.

Golden Blount, Inc. v. Robert H. Peterson Co.
Decided February 15, 2006
Judge Linn with Judges Michel and Lourie

*           A legal opinion can best ward off a willfulness finding for patent infringement if obtained early and out of a clear concern to determine and avoid infringement.

Blount sued Peterson for alleged infringement of fireplace burner patent claims at the U.S. District Court for the Northern District of Texas.  Judge Jerry Buchmeyer held the claims not invalid and willfully infringed.  In a first appeal to the Federal Circuit, all issues of infringement were vacated and the district court reconsidered these issues but found willful infringement again.  Peterson appealed a second time to the Federal Circuit.

The Federal Circuit affirmed willfulness and an award of attorney fees, noting that “Peterson made little-to-no effort to access whether it infringed or whether the patent was invalid after receiving notice of the patent” and that Peterson “only sought a thorough opinion of counsel after suit was filed, and then only out of concern to avoid a willfulness finding and a possible judgment for attorney fees.” 

Willfulness findings in patent infringement carry high penalties.  A legal opinion obtained solely as a tool to avoid a willfulness finding may not be very persuasive to a court.

Amini Innovation Corporation v. Anthony California, Inc. and James Chang

Decided March 3, 2006
Judge Rader with Judes Mayer and Dyk

*     “Summary judgment is not highly favored on questions of substantial similarity in copyright cases.”

Amini, a furniture maker, sued competitor Anthony for alleged copyright violation and design patent infringement, at the U.S. District Court for the Central District of California.  Judge S. James Otero granted Anthony summary judgment of non-infringement after finding no similarity under a 9^th circuit two part test for copyright similarity.  This test includes: 1. an objective comparison of specific expressive elements; and 2. a subjective comparison of “whether the ordinary reasonable audience would find the works substantially similar in the ‘total concept and feel of the works.’”  Amini appealed to the Federal Circuit.

The Federal Circuit reversed because the district “court’s conclusion appears to be based primarily on its own visual inspection” and “on summary judgment the Ninth Circuit disfavors application of the subjective-intrinsic part” of the infringement test.  

Copyright litigants should focus on the issue of “total concept and feel” of a contested design to get past the summary judgment stage and have this subjective determination made during trial.

Jazz Photo Corporation v. United States and Fuji Photo Film Co., Ltd.

Decided February 28, 2006

Judge Lourie with Judges Newman and Schall

*           The “presumption of regularity” that products sold in the U.S. have been imported lawfully and subject to the first sale doctrine can be proven by circumstantial evidence.

This fourth appeal to the Federal Circuit follows earlier patent litigation by Fuji over disposable cameras that had been remanufactured in China and re-imported.  In response to a previous Exclusion Order prohibiting importation of remanufactured disposable cameras, U.S. Customs held shipments from Jazz at the port of Los Angeles.  Jazz challenged Customs at the U.S. Court of International Trade and won a judgment that most of the shipment should be released because the cameras originally had been sold in the U.S., which extinguished Fuji’s patent rights under “the affirmative defense of first sale and permissible repair.”  Fuji appealed to the Federal Circuit.

The Federal Circuit affirmed because Jazz properly relied on circumstantial evidence that most of the re-imported cameras had been sold originally in the U.S.  The Federal Circuit pointed out that “Jazz offered evidence that at least 85% of the (camera) shells collected” from photo processors and sent to China for repair “were purchased at the same location as where processing occurred.”  Under the “presumption of regularity” doctrine, such U.S. sold cameras are assumed to have been legally imported and thus subject to the first sale doctrine, exhausting any U.S. patent rights.

Fuji Photo had fought the issue of  what constitutes permissible repair, and after losing that battle at the Federal Circuit, has relied on U.S. Customs to fight the issue of which camera shipment lots contain cameras that had been sold originally in the U.S.  The Federal Circuit agreed with the U.S. Court of International Trade that Fuji had no right to participate in the proceedings there or even to access the trial record.

Digital Control Incorporated et al. v. The Charles Machine Works (“Ditch Witch”)
Decided February 8, 2006
Judge Clevenger with Judges Michel and Schall

*          Summary judgment is not appropriate for determining materiality of a withheld reference because “what a reference teaches is a question of fact”.

Digital sued Charles at the U.S. District Court for the Western District of Washington for allegedly infringing claims to horizontal boring techniques, but Judge Marsha Pechman found Digital’s patent invalid due to inequitable conduct at the PTO.  The court on summary judgment found a withheld reference material and found intent after a bench trial.  Digital appealed to the Federal Circuit.

The Federal Circuit vacated and remanded because whether a withheld reference is material poses a factual question that requires a trial and cannot be settled by summary judgment.  Interestingly, the Federal Circuit also reviewed four different materiality standards and noted that “there is no reason [] to be bound by any single standard (because)…inequitable conduct requires a balancing of materiality and intent.”

This inequitable conduct case customarily turned on the issue of intent, which the district court inferred from the inventor’s submission of a misleading Rule 131declation to overcome a reference during prosecution.  The Federal Circuit reemphasized that “we are especially cognizant of misstatements made in an affidavit to the PTO.”  Patent practitioners should be extremely careful when making statements in declarations to the PTO.

Catherine Lacavera v. Jon W. Dudas
Decided February 6, 2006
Judge Mayer with Judges Newman and Gajarsa

*          The PTO may grant a foreign citizen “limited recognition status (as a patent agent) consistent with …work and time restrictions” of their visa.

Catherine, a Canadian citizen and nonimmigrant alien, worked at White & Case in New York as an attorney under a one year visa that permitted her to prepare and prosecute patent applications at that office only.  After passing the patent bar, the PTO granted Catherine patent agent recognition that was limited to preparing and prosecuting applications for Google, as described in her U.S. visa.  Catherine then sued the PTO for full recognition at the U.S. District Court for the District of Columbia.  Judge John Bates granted summary judgment for the PTO and Catherine appealed to the Federal Circuit. 

The Federal Circuit affirmed, because “it was reasonable for the PTO to enact regulations that limit an alien’s ability to practice before it to those activities in which the alien may lawfully engage.”  A key factor in this case was that the Immigration and Naturalization Service determines conditions under which a non-citizen resident can work in the U.S..  Visa conditions dominate the legal status, regardless of patent bar examination results at the PTO.

Medichem v. Rolabo, S.L.

Decided February 3, 2006
Judge Gajarsa with Judges Schall and Dyk

*          “[E]vidence that might be sufficient per se to corroborate a claim directed to the product will generally not be sufficient to corroborate a claim directed to the process..”

In this second appeal from the U.S. District Court for the Southern District of New York, Rolabo argued that Judge Jed Rakoff improperly awarded inventorship priority to Medichem (who had a later application filing date), because Medichem’s evidence failed to corroborate an earlier reduction to practice date.  Both parties are pharmaceutical manufacturers and the contested claims are methods for producing Loratadine (active ingredient in Claritin™). 

The Federal Circuit reversed the award of priority to Medichem because the corroboration evidence merely pertained to “possession of the chemical loratadine….(and not) the claimed process..” (emphasis in original). 

This is an interesting case where the PTO and a district court independently ruled oppositely on the same patent issue (inventorship) and wherein the Federal Circuit followed the PTO and reversed the court.  The Federal Circuit stated that “[w]hile appellant does not argue that the Board decision has a binding effect on this court, Board decisions nevertheless represent the views of a panel of specialists in the area of patent law.”  A district court decision is not superior to a decision from the patent office. 

Michael S. Brown et al. v. Mariano Barbacid et al.

Decided February 2, 2006

Judge Newman with Judges Rader and Prost

*          When weighing inventorship issues, the PTO must view “proffered evidence as it would be viewed by persons experienced in the field of invention.”

In this second appeal from an interference at the U.S. PTO, Brown, the junior party, argued that the PTO improperly denied Brown’s corroboration evidence of diligence in reducing his invention to practice and incorrectly deemed Barbacid first inventor.. 

The PTO Board had reviewed laboratory notebooks that Brown had offered to show diligence, but did not accept the pages into evidence because the PTO did not “understand” the results described there, commenting “[t]here is no explanation of what these pages are saying.”  The .Federal Circuit reversed because “[t]he board is charged with expertise appropriate to the invention under examination…”

A theme in Federal Circuit decisions is that a patent specification and claim language should be construed from the viewpoint of a skilled artisan.   This case illustrates that a skilled artisan’s knowledge should be used to determine acts of invention as well.  The PTO Board and, especially courts, often lack technical experts.  That is no excuse to ignore the understanding technically trained  persons when deciding state of the art technical issues.

Applied Medical Resources Corporation v. United States Surgical Corporation

Decided January 24, 2006

Judge Lourie with Judges Rader and Linn

*          Infringement “damages evaluation must relate to the time infringement occurred.”

This is a second appeal from a litigation over Surgical’s infringement of Applied’s trocar surgical device patent.  After losing a first litigation, Surgical received an injunction and a large royalty penalty.  Surgical then redesigned its device but was sued again over a different claim from the same patent.  A second jury, at the U.S. District Court for the Central District of California, found willful infringement and awarded higher damages.  Surgical appealed to the Federal Circuit, arguing that the royalty from the first case (at another court) should apply under principles of collateral estoppel.

The Federal Circuit pointed out that “collateral estoppel is not appropriate because the necessary reasonable royalty determination (for the redesigned device) is not identical to that decided (in the first litigation).” 

This protracted litigation covered a lucrative medical device.  A jury found willful infringement despite Surgical’s production of three written non-infringement letters from outside counsel.  The first two letters did not address infringement of asserted claims, and the third was mailed after Surgical started selling the redesigned product.  Applied won $20.5 million from the first litigation and won a second judgment of more than 3 times this for the redesign, partly because the first litigation established the fact of “increased demand for the patented product and decreased supply resulting from (Surgical’s removal from the marketplace).”

*          “[S]uggestion or motivation to combine references does not have to be stated expressly; rather it may be shown by reference to the prior art itself, to the nature of the problem solved by the claimed invention, or to the knowledge of one of ordinary skill in the art.”

The PTO refused Johnston’s claims to pipes having diameters over 15 feet, in view of extensive prior art dating back to 1956.  Johnston appealed his loss to the Federal Circuit.

The Federal Circuit reviewed the PTO’s anticipation and obviousness rejections and affirmed.  The most contested claim recited a pipe that had been “reshaped into an arch shape” with “a beginning diameter above 144 inches.”  The examiner had asserted an obviousness rejection against this claim over two references but did not show explicit motivation from the literature for their combination.  Nevertheless, the Federal Circuit agreed that the combination was obvious because “both references deal with the same field of technology, and both show (the same principal claim element of) spirally formed pipe of large diameter.”

The PTO does not allow claims that merely recite unique combinations of extremely well known parameters and may not have to provide statements from the prior art to establish motivation in these instances.  Such applicants should consider protecting the fruits of their believed inventive genius by trademark or design patent registration.

*          “[A]ffirmative misrepresentations, in contrast to misleading omissions, are more likely to be regarded as material” and show intent for determining inequitable conduct.

This case is a rehearing of an earlier patent litigation wherein the Federal Circuit had affirmed a lower court’s finding that Purdue engaged in inequitable conduct when obtaining a pharmaceutical patent.  The earlier hearing reviewed how the patent applicant had argued the existence of a surprising discovery against rejections at the PTO, but did not tell the examiner that his discovery was merely a desire in his mind.  The U.S. District Court for the Southern District of New York had found that Purdue engaged in inequitable conduct, and the Federal Circuit affirmed this decision.

In this rehearing, the Federal Circuit vacated the earlier decision because the district court “may have erred to the extent that it relied on a high level of materiality in determining whether Purdue intended to deceive the PTO and (thus)…committed inequitable conduct.”   In particular, the Federal Circuit pointed out that “[t]his omission of information was material, but not as material as an affirmative misrepresentation would have been.” 

This decision clarifies that the level of materiality from non-disclosure may not suffice to infer intent for inequitable conduct.  On remand, the district court was directed to look to other “unique facts” such as the fact that “Purdue repeatedly relied on that discovery to distinguish its invention from prior art” in making the determination.  Purdue is not out of the woods yet.  

*          “References to a preferred embodiment, such as those often present in a specification, are not claim limitations.”

Varco sued Pason at the U.S. District Court for the District of Colorado for allegedly infringing claims to methods and apparatuses for automatically regulating the release of a drill string on a drilling rig.  Judge Richard Matsch construed claim language for automated release of a drill bit as limited to a two step manual process and held that Pason’s automated process does not infringe.  The court refused Varco’s request for a preliminary injunction and Varco appealed to the Federal Circuit.

The Federal Circuit affirmed because the district court improperly had relied on a specification statement that regulators “must” be manually calibrated before use, despite further description of automated features.  The court noted that the lower court decision was limited to literal infringement and that because “this case seems to present….improvements on prior innovations… the district court (on remand) may…consider infringement under the doctrine of equivalents.”

A practitioner should not make absolute statements in a specification such as that a particular procedure “must” be carried out.  During litigation a defendant may use such statement to limit the scope of the asserted claims, as happened here.

Frederic A. Stern v. The Trustees of Columbia University et al.

Decided January 17, 2006

Judge Mayer with Judges Rader and Linn

*          A contributor to an invention may need to “have an understanding of the claimed invention” to meet requirements for co-inventorship.

While a medical student at Columbia, Stern worked in Bito’s laboratory on the use of prostaglandins for treating glaucoma.  After Columbia obtained a patent on this area, Stern sued Columbia at the U.S. District Court for the Southern District of New York and asked to be added as a coinventor.  Judge Richard Casey granted Columbia summary judgment that Stern lacked sufficient evidence to prove co-inventorship.  Stern appealed to the Federal Circuit.

The Federal Circuit noted that certain claim elements such as therapeutic use in the absence of tachphylaxis (a complication) were not conceived until after Stern left Columbia, and affirmed.  The Federal Circuit repeated its often quoted statement that “[c]onception is defined as ‘the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention…” The court did not reach the issue of how much conception is needed for co-inventorship because acts that occurred before a complete conception were discounted as evidence of coinventorship.

Ncube Corporation (Now C-COR Inc.) v. Seachange International, Inc.
Decided January 9, 2006

Judge Rader with Judges Friedman and Dyk

*          A specification with only one embodiment does not limit a broader claim interpretation when a dependent claim states that embodiment.

nCube sued Seachange at the U.S. District Court for the District of Delaware for infringing claims to a high bandwidth server that uses an “upstream manager” to accept information from different types of networks.  Judge Joseph Farnan Jr. construed this term to include use of logical addresses, as well as physical addresses, despite a limiting description in the specification of only logical addresses.  A jury relied on the broad definition and found infringement.  Seachange appealed to the Federal Circuit.

The Federal Circuit affirmed the broad claim construction and a literal infringement holding.  The Federal Circuit noted that a dependent claim recited the use of logical addresses and under the principle of claim differentiation the independent claim should be broader with respect to this recited term.  Judge Dyk dissented, with a view that the “key innovation” and “purpose” of the patent arises from “how…the data are ‘addressed’” and that only one address type was taught by the specification.

Claim differentiation sometimes can overcome a narrow patent specification to provide a broadening construction for a claim term.  A patent practitioner might add dependent claims that recite specific features listed in a specification during prosecution when relying on an unusually narrow specification during prosecution.

Fieldturf International, Inc. et al. v. Sprinturf, Inc., Sportfields et al.

Decided January 5, 2006

Judge Newman with Judges Schall and Dyk

*          “A bid to supply a product specified in a ‘request for proposal’ is a traditional offer to sell” under 35 U.S.C. 271(a).

The Folsom school district of California solicited proposals for synthetic grass fields, by offering a project specification based in part on claim elements of FieldTurf’s patent.  SportFields, a competitor, complained that the solicitation contradicted laws against sole source procurement but submitted its own proposal.  Fieldturf then sued SportFields at the U.S. District Court for the Eastern District of California, for offering to sell under 35 USC 271(a) in violation of Fieldturf’s patent.  Judge Frank Damrell, Jr. granted SportFields summary judgment of non-infringement, because SportFields had intended to sell its own product, which did not infringe the patent.  Fieldturf appealed to the Federal Circuit.

The Federal Circuit affirmed, after considering non-contract evidence of “the nature of the SportFields product that was intended” and differences from the product that Sprinturf had communicated to the school.  The Federal Circuit further noted that under California law, proposal requests automatically include “an ‘or equal’ provision when” the proposal “designated a patented product.”

The Federal Circuit noted that “efforts of commercial entities” such as Fieldturf, to “achieve specifications” in bid contracts “that favor their product are not illegal, absent fraud or deception.”  A patentee can persuade an agency to adopt a patented technology, with proposals that include elements of patent claims.  A practitioner may draft claims with this in mind

The case summaries represent the contemporary, provisional and private views of Marvin Motsenbocker and are intended to be informative only and not to give legal advice or opinions. Any views expressed or implied are subject to change and are not necessarily those of any law firm, its attorneys or clients.