Back to Patenting Federal Circuit Case Law  

 

In Re. Stephen W. Comiskey
Decided September 20, 2007   pdf
Judge Dyk with Judges Michel and Prost

 

“[A] claim reciting an algorithm or abstract idea (is patentable only if it) involves another class of statutory subject matter, i.e. a machine, manufacture or composition of matter.”

The PTO refused Comiskey’s claims to a “system of mandatory arbitration resolution regarding …documents” as obvious.  After an unsuccessful appeal to the Board, Comiskey appealed to the Federal Circuit.

The Federal Circuit did not rule on obviousness but instead held that most of Comiskey’s business method claims fail 101 because they were not “tied to a particular apparatus or operated to change materials to a different state or thing.”  In remanding, the Federal Circuit pointed out that Comiskey’s “unpatentable mental process” could be “combined with a machine” to “produce subject matter” but that “routine addition of modern electronics” to an old process often poses a major obviousness challenge.

Comiskey’s difficulties at the PTO and at the Federal Circuit exemplify a greater difficulty in obtaining and keeping business method patents.

 

 

In Re. Petrus A.C.M. Nuijten
Decided September 20, 2007   pdf
Judge Gajarsa with Judges Linn and Moore, Linn partly dissenting

Claims drawn to “physical but transitory forms of signal transmission such as … electrical signals through a wire, and light pulses” are not allowable.

The PTO refused Nuijten’s claims to “a signal with embedded supplemental data” on 101 non-statutory subject matter grounds.  Nuijten appealed to the Federal Circuit.

A Federal Circuit panel majority affirmed the 101 rejection because, although “the claims are limited so as to require some physical carrier of information,” the claimed signals “do not themselves comprise some tangible article or commodity.”  In a dissent, Judge Linn agreed that the claimed signals had “physical form” but very convincingly argued that such claimed signals clearly are a “manufacture” and are patentable.

The Supreme Court or a later federal circuit decision will have to fix this illogical case law.  Meanwhile, an applicant in Nuijten’s situation can successfully obtain alternate claims “to the process he invented, a device that performs that process, and a storage medium holding the resulting signals.”

                                                                               In Re. Icon Health and Fitness, Inc.

Decided August 1, 2007  pdf
Judge Prost with Judges Schall and Prost

 In proving obviousness, a prior art reference “by addressing a similar problem, provides analogous art …(and) goes a long way to demonstrating a reason to combine … references.”

Icon sought reexamination of claims to a treadmill having a “gas spring” that allows easier folding and storage.  The PTO found the claims obvious however, based on a prior art combination of a folding treadmill and a dual-action spring, so Icon appealed to the Federal Circuit.

The Federal Circuit affirmed, noting that the cited art in the same field addressed the same problem with a similar, dual acting spring.  Thus, under KSR “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”

Patent specifications should include definitions and alternative detailed embodiments to support alternative narrow claims.  The applicant in this case could not get narrower, less obvious claims during reexamination partly because the specification “provides only minimal discussion of the gas springs.”

 

 

Egyptian Goddess, Inc. and Adi Torkiya v. Swisa, Inc. and Dror Swisa
Decided August 29, 2007 pdf
Judge Moore with Judges Archer and Dyk, Dyk dissenting


Infringement of a design patent requires that an accused device look the same as and “appropriate the novelty in the patented device which distinguishes it from the prior art.”

Egyptian sued Swisa in the U.S. District Court for the Northern District of Texas for alledgedly infringing a design patent for a 4 sided “ornamental nail buffer.” Judge David Godbey granted summary judgment of non-infringement and Egyptian appealed.

The Federal Circuit affirmed because the accused device lacked a claimed novelty feature, noting that “[f]or a combination of individually known design elements to constitute a point of novelty, the combination must be a non-trivial advance over the prior art.” Judge Dyk dissented with a view that the majority was “requiring a showing of nonobviousness as part of the point of novelty test.”

As noted by the dissent, “design patents have almost no scope” (and are seldom successfully litigated, even in the Northern District of Texas).

 


In Re. John B. Sullivan and Findlay E. Russell
Decided August 29, 2007 pdf
Judge Lourie with Judges Newman and Gajarsa
 

Obviousness “cannot be determined without considering evidence attempting to rebut the prima facie case.”

The PTO Board of Patent Appeals and Interferences affirmed an examiner’s final rejection of John’s claims to an anti-venom made from antibody fragments. John appealed to the Federal Circuit, arguing that the Board did not consider his several statements of unexpected results and prior art teaching away that he had presented in several declarations.

The Federal Circuit vacated the Board’s decision. The Board was wrong to narrowly categorize and dismiss John’s declarations as “only relat(ing) to” a particular claim element because “[r]ebuttal evidence is ‘merely a showing of facts supporting the opposite conclusion’…in any material respect.”

Incredibly, the PTO even argued that John’s “secondary considerations such as unexpected results and commercial success is being raised for the first time on appeal and should be deemed waived” despite John’s timely entry into the prosecution record and continued arguments. These facts depict the PTO as a formidable litigant that is not above misstating basic facts to a court after denying a patent to a private citizen in an ex parte proceeding.

 


Automotive Technologies International, Inc. v. BMW of North America, Inc. et al.
Decided September 6, 2007 pdf
Judge Lourie with Judges Rader and Prost

 

“Claims must be enabled to correspond to their scope.”

Automotive sued auto makers at the U.S. District Court for the Eastern District of Michigan for allegedly infringing claims to side impact sensors. Judge Robert Cleland granted summary judgement of invalidity on enablement grounds because the claim scope includes both mechanical and electrical sensors but the specification teaches only a single figure “conceptual view” of electronic embodiments. Automotive appealed to the Federal Circuit.

The Federal Circuit affirmed because the “novel aspect of (the) invention must be enabled in the patent” and the “mere boxed figure of the electronic sensor and the few lines of description fail (to teach) …. How to make and use the electronic sensor.“

Laudatory statements of astonishing technology should be matched with commensurate disclosure. The Federal Circuit noted that when describing such “breakthrough technology it is insufficient to merely state (in the specification) that known technologies can be used.”
 



Harvey D. Gillespie v. Dywidag Systems International, USA
Decided September 6, 2007 pdf
Judge Newman with Judges Schall and Bryson


“The patentee is held to what he declares during the prosecution of his patent.”

Gillespie sued Dywidag at the U.S. District Court for the District of Utah for allegedly infringing claims to a mine roof bolt “having an outer surface defining a drive head.” Judge Bruce Jenkins found literal infringement and Dywidag appealed.

The Federal Circuit construed the claims more narrowly based on Gillespie’s comments during prosecution that indicated “outer surface” is exterior with respect to the drive head. The accused device uses an internal hex drive however, which prompted the Federal Circuit to reverse based on no literal infringement.

Careless statements at the patent office can later bite the patentee during claim construction in patent litigation. On the other hand, a clever practitioner can place statements in the record to favorably amend the meaning of a claim term after the filing date.



Mitutoyo Corporation et al. v. Central Purchasing, LLC
Decided September 5, 2007 pdf
Judge Mayer with Judges Rader and Moore
 

During litigation “summary judgement is only appropriate where there are no genuine issues of material fact.”

Mitutoyo and Central sued each other over Central’s importation of digital calipers that are claimed in Mitutoyo’s US patent. In a last suit at the U.S. District Court for the Northern District of Illinois, Judge Samuel Der-Yeghiayan granted summary judgment of infringement but dismissed Mitutoyo’s willful infringement claim. Both sides appealed various issues to the Federal Circuit.

The Federal Circuit reversed the dismissal of willfulness because “Mitutoyo only needed to plead a bare minimum of facts necessary to put the defendant on notice of the claim” and such facts raised genuine issues.

One must get a good, experienced civil procedures person when litigating a patent because much litigation churns around expensive procedural wrangling.

 


Forest Laboratories, Inc. et al. v. Ivax Pharmaceuticals, Inc. et al.
Decided September 5, 2007 pdf
Judge Lourie with Judges Friedman and Schall, Schall dissents in part
 

“A reference that is not enabling is not anticipating.”

Forest sued Ivax at the U.S. District Court for the District of Delaware in response to Ivax’s filing of an Abbreviated New Drug Application. which asserted that Forest’s patent to a pharmaceutical was invalid. Judge Joseph Farnan, Jr. upheld the validity of the patent, despite presentation of prior art that described the same pharmaceutical. Ivak appealed to the Federal Circuit.

The Federal Circuit affirmed because, although the prior art shows the compound, “it does not tell how to obtain it” and was not enabled in view of “the failures of various scientists” to obtain the compound. Schall dissented over a separate issue of whether a manufacturer who only supplied data to the defendant should be subject to an injunction.

Biotechnology is filled with prior art from smart people who imagine, describe and predict many things. Such dream states are not prior art if they could not have been actually realized at the time of their publication.
 


In Re. Icon Health and Fitness, Inc.
Decided August 1, 2007 pdf
Judge Prost with Judges Schall and Prost


In proving obviousness, a prior art reference “by addressing a similar problem, provides analogous art …(and) goes a long way to demonstrating a reason to combine … references.”

Icon sought reexamination of claims to a treadmill having a “gas spring” that allows easier folding and storage. The PTO found the claims obvious however, based on a prior art combination of a folding treadmill and a dual-action spring, so Icon appealed to the Federal Circuit.

The Federal Circuit affirmed, noting that the cited art in the same field addressed the same problem with a similar, dual acting spring. Thus, under KSR “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”

Patent specifications should include definitions and alternative detailed embodiments to support alternative narrow claims. The applicant in this case could not get narrower, less obvious claims during reexamination partly because the specification “provides only minimal discussion of the gas springs.”

 


Aventis Pharma Deutschland Gmbh et al. V. Lupin, Ltd. et al.
Decided September 11, 2007 pdf
Judge Linn with Judges Mayer and Robertson


A compound “which is structurally similar to a prior art compound” is “presumed” to have “similar properties” and may be prima facie obvious.

Aventis sued Lupin at the U.S. District Court for the Eastern District of Virginia for allegedly infringing Aventis’s patent to a purified form of a pharmaceutical compound “ramipril.” Judge Robert Doumar found the claims not invalid and infringed, and Lupin appealed to the Federal Circuit.

The Federal Circuit pointed out that: 1) the invention is to a mirror image form of a known drug; 2) some of the “S” mirror forms of the drug were known to be superior; and 3) there are only 32 different S mirror forms of the drug with known techniques for purification. The court thus found Aventis’s claim to a purified form of one of the 32 possible forms invalid on obviousness grounds and reversed the decision.

This case teaches that if one has tools to do something desirable and a small number of possible outcomes exist, then the work to “discover” one of the outcomes is not an amazing feat of genius but instead obvious. Unfortunately, patent law does not reward hard work funded by large investments in R&D. Instead, one generally needs to show astonishment, unexpected results, or other evidence of an intellectual leap.



L.B. Plastics, Inc. v. Amerimax Home Products, Inc. et al.
Decided September 12, 2007 pdf
Judge Dyk with Judges Newman and Rader

 

“[W]hen a specification …criticizes … prior art alternatives, the patentee cannot then use the doctrine of equivalents to capture those alternatives..”

L.B. sued Amerimax at the U.S. District Court for the Western District of North Carolina for allegedly infringing claims to a roof “gutter guard” having a “continuous heat weld” to attach a leaf-excluding mesh. Judge Robert Conrad Jr. found that the accused gutter guard, which used “hot glue adhesive” to hold the mesh, did not infringe, either literally or under the doctrine of equivalents. L.B. appealed.

The Federal Circuit affirmed, pointing out that “the specification …criticizes prior art attachment means” and emphasizes the invention’s “novel construction.” Since the prior art generally included adhesives, a skilled reader of the specification “would clearly conclude that the inventor thought that adhesive attachments generally were undesirable” and the doctrine of equivalents cannot cover those embodiments.

Comparative statements about the prior art in a patent specification can shave claim scope during patent enforcement. A practitioner should provide ample details of alternative embodiments in the specification but hold onto comparisons with the prior art and teachings of the gist of the invention until needed for selective use during prosecution.
 

 

Arminak and Associates et al. v. Saint-Gobain Calmar, Inc. et al.
Decided September 12, 2007 pdf
Judge Holderman with Judges Michel and Gajarsa
 

A central issue in “every design case, is the identity of the ordinary observer” because an informed tradesman or distributor is not easily fooled by a similar design.

Calmar sued Arminak at the U.S. District Court for the Central District of California for allegedly infringing Calmar’s design patent claims to a spray bottle nozzle shroud. Judge Cormac Carney granted summary judgement of non-infringement because “the ordinary observer of trigger sprayers … was not the retail consumer” but instead a “buyer of trigger sprayers for a contract filler or an industrial purchaser” who “would not be deceived by the similarities” between the accused device and the patented design. Calmar appealed.

The Federal Circuit affirmed, noting that “the ordinary observer test (to determine design patent infringement) is on the actual product that is presented for purchase, and the ordinary purchaser of that product.”

Design patents are difficult to enforce.
 


In Re. Seagate Technology, LLC
Decided August 20, 2007 pdf
En banc decision with two concurring opinions


“[P]roof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness.”

Seagate petitioned the Federal Circuit for a writ of mandamus to direct the U.S. District Court for the Southern District of New York to vacate an order that would have broken attorney client privilege and work product protection from trial counsel regarding willful infringement of a patent. The Federal Circuit decided to review this privilege issue en banc and also the larger issue of willfulness in patent infringement.

This decision lowers the standard of willfulness to better comport patent law “with the common law usage, which treated actions in ‘reckless disregard’ of the law as ‘willful violations.’” Under the new “objective reckless” standard “to establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” The Federal Circuit also affirmed that “relying on opinion counsel’s work product does not waive work product immunity with respect to trial counsel” and granted the writ of mandamus. Judges Gajarsa and Newman separately concurred with an opinion that argued for removing “willfulness” from patent statute interpretation. Newman additionally wrote to complain of problems with the law of willfulness.

Under the new “objective reckless” standard for willfulness, companies might save money by buying fewer infringement opinions.



 

Safetcare Manufacturing, Inc. v. Tele-made, Inc. et al.
Decided August 3, 2007
     Judge Gajarsa with Judges Michel and Robinson

 
“[T]he specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor.”  pdf

Safetcare sued Tele at the U.S. District Court for the Southern District of Texas for allegedly infringing claims to a bed for very heavy people that has “a plurality of motors …for exerting a pushing force.”  Judge Vanessa Gilmore held that the accused product, which has multiple motors but only one pushing motor, does not infringe.   Safetcare appealed.
 
The Federal Circuit affirmed because Safetcare’s patent specification emphasizes motors that push, instead of pull, for safety reasons.  In particular, the background section of the patent distinguished over prior art pulling motors.
 
Background sections of a patent specification should not include strong comparisons with prior art, unless the applicant wishes to limit the claims by such statements.
 
 

     Boston Scientific Scimed, Inc. v. Medtronic Vascular, Inc. et al.
           Decided August 8, 2007
     Judge Mayer with Judges Bryson and Prost

 
“[A]n applicant for a U.S. patent may only benefit from the priority of a foreign application if it was filed by the U.S. applicant or on his behalf.” pdf
 
Boston lost a first to invent priority contest at the PTO because an earlier patent application filed in Europe was not assigned to Boston or filed on behalf of the inventor.  Boston appealed, but the Federal Circuit affirmed, citing the “the personal nature of this right” of priority. 
 
 The problem here was that a company filed a European application without naming the inventor and did not obtain an assignment from that inventor until later.  The European application could not serve as priority to a later filed application in the US by that same inventor. 
 
 
 

 

     Sony Electronics, Inc. et al. V. Guardian Media Technologies, Ltd.
Decided August 3, 2007
     Judge Prost with Judges Newman and Friedman

 
“[A] patentee’s …willingness to engage in licensing negotiations does not prevent a plaintiff from maintaining a declaratory judgment suit.”  pdf
 
Guardian contacted large consumer electronics companies with allegations of infringement of patent claims to methods and devices for blocking  television programs.  After 5 years, Guardian repeated its request for licensing, but each company resisted, giving reasons of patent invalidity and non-infringement.  Finally the companies filed declaratory judgment suits against Guardian, which were consolidated at the U.S. District Court for the Southern District of California.  Judge Rudi Brewster granted Guardian’s motion to dismiss because the plaintiffs lacked reasonable apprehension of suit from Guardian.  The plaintiffs appealed.
 
The Federal Circuit vacated and remanded because “even  if the parties” were involved in “’negotiations,’ Sony was within its right to terminate them when it determined that further negotiations would be unproductive.”
 
This case confirms that a potential licensee can sue a plaintiff during license negotiations if “there is an actual controversy between the parties.”  The critical question now  is: what must be argued during negotiation to create “an actual” controversy?  Presumably, the licensor’s specific accusation of infringement, which specified claim numbers and identified accused products, created the controversy and allowed the other side to start the lawsuit.  Perhaps a patentee needs to either file a lawsuit first, negotiate a license without accusing the other side of specific infringement, or execute an agreement not to sue before providing details of specific infringement.
 


     Nisus Corporation, v. Perma-chink systems et al.
  Decided August 13, 2007
     Judge Bryson with Judges Rader and Linn

 
A court order that “criticizes an attorney” must be “a formal judicial action” against the attorney in order for the attorney to appeal.  pdf
 
Nisus sued Perma at the U.S. District Court for the Eastern District of Tennessee but settled after Judge Thomas Varlan entered judgment that Nisus’s patent is unenforceable due to inequitable conduct.  Teschner, who prosecuted the patent, subsequently tried to intervene to explain his side of the inequitable conduct story.  The court refused the intervention and Teschner appealed to the Federal Circuit.
 
The Federal Circuit dismissed Teschner’s appeal of the district court’s order because that order merely made negative comments and did not affect his legal rights. 
 
The attorney’s problem arose when he transferred prosecution responsibility to another when outstanding references remained that had to be submitted in an IDS.  The first attorney was blamed for the subsequent failure to submit an IDS. 
 



 

 

Pharmastem Therapeutics, Inc. v. Viacell, Inc. et al.
Decided July 9, 2007 http://www.fedcir.gov/opinions/05-1490.pdf
Judge Bryson with Judges Newman and Prost, Newman dissenting

"Admissions in the specification regarding the prior art are binding on the patentee for purposes of a later inquiry into obviousness."

Pharmastem sued Viacell at the U.S. District Court for the District of Delaware, for allegedly infringing claims to a procedure for freezing newborn cord blood and using stem cells from the blood for disease treatment. A jury found the claims infringed and not obvious. Both sides appealed to the Federal Circuit.

The Federal Circuit reversed the non-obviousness holding because the patent specification cited prior art, which indicated that cord blood has stem cells that can treat disease. The Federal Circuit explained that "the inventors merely used routine research methods to prove what was already believed to be the case." Judge Newman dissented however, citing "general scientific skepticism" that the invention would work.

Sometimes a practitioner provides prior art in a specification to prove enablement, particularly for biotech inventions. However, such prior art should be offered during prosecution, since over-citation of prior art in a specification can make an invention seem obvious.

 

Benitec Australia, Ltd. v. Nucleonics, Inc.
Decided July 20, 2007 http://www.fedcir.gov/opinions/06-1122.pdf
Judge Whyte with Judges Rader and Dyk, Dyk dissenting

 A plaintiff patentee’s promise not to sue can remove "substantial controversy" and terminate litigation without giving the defendant a chance to prove invalidity.

 Benitec sued Nucleonics at the U.S. District Court for the Northern District of California for alleged infringement of claims to an RNA-based disease therapy. Judge Joseph Farnan Jr. granted plaintiff Benitec a dismissal based on the clinical research exemption to infringement under 35 USC 271(e)(1). Defendant Nucleonics appealed the dismissal of its counterclaims of patent invalidity.

 The Federal Circuit affirmed because a "substantial controversy" for jurisdiction under the new Supreme Court guidelines was removed by Benitec’s promise not to sue Nucleonics for past acts, in Benitec’s dismissal request. Later acts, such as Nucleonics "discussions with an unnamed potential customer" could not "provoke a declaratory judgement suit" since such "scant showing" would "allow nearly anyone who so desired to challenge a patent." Dyk dissented with an opinion that invalidity counterclaims should only be dismissed during litigation when "there is no possibility of a future controversy."

 Significantly, during this litigation the PTO reexamined Benitec’s patent and initially declared all of the claims invalid. Recently, patent reexamination often is used to weaken a plaintiff’s case before or during litigation.

 

Donald C. Hutchins v. Zoll Medical Corporation
Decided July 3, 2007http://www.fedcir.gov/opinions/06-1539.pdf
Judge Newman with Judges Michel and Dyk

 "Copyright does not protect individual words and ‘fragmentary’ phrases when removed from their form of presentation and compilation."

 Donald sued Zoll at the U.S. District Court for the District of Massachusetts for allegedly infringing claims to a computer aided CPR device and for copyright infringement of "words and phrases" used in the device. Judge Michael Ponsor granted summary judgment of no infringement and Donald appealed.

 The Federal Circuit affirmed because Donald had amended his claims to recite "general purpose" computer but the accused machine had limited functionality. Donald’s copyright infringement claims also were rejected because Zoll had merely used common phrases that a human (or computer) would use to instruct a CPR procedure.

 Donald represented himself in this case but the Federal Circuit seemed to have patience with his various legal errors.

  

Festo Corporation v. SMC Corporation et al.
Decided July 5, 2007 http://www.fedcir.gov/opinions/05-1492.pdf
 Judge Dyk with Judges Michel and Newman, Newman dissenting

 For infringement under the doctrine of equivalents "an alternative is foreseeable if it is disclosed in the pertinent art in the field of the invention."

Here is another Festo case. Upon remand to the U.S. District Court for the District of Massachusetts, Judge Patti Saris found that the single aluminum ring used in defendant SMC’s product was foreseeable. Thus, SMC’s product could not infringe Festo’s patent under the doctrine of equivalents. Festo appealed, arguing that foreseeability requires that the applicant could "reasonably expect" the aluminum equivalent to function (shield magnetic fields!) in the claimed invention.

 The Federal Circuit declared that "the foreseeability requirement (for estoppel to apply to an equivalent) does not require the knowledge that the equivalent would satisfy the function/way/result test or the insubstantial differences test" and affirmed. Judge Newman in a dissent, argued that "technologic equivalency" must have been foreseeable and merely matching the claim scope before amendment to what was "generally known" in the art is not enough.

 A practitioner should avoid complex and expensive Festo-esque equivalents issues by careful claim drafting and by maintaining a detailed specification on file at the PTO during commercial use of an invention. The latter may become more difficult under the new continuation practice rules expected this Fall.

 

Biomedino, LLC v. Waters Technologies Corporation et al.
Decided June 18, 2007
Judge Rader with Judges Gajarsa and Linn

"If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid as indefinite."

Biomedino sued Waters at the U.S. District Court for the Western District of Washington for allegedly infringing claims that recite "control means for automatically operating valves." Judge Robert Lasnik found the claims invalid on indefiniteness grounds because the specification did not provide structure for the "control means." Biomedino appealed to the Federal Circuit.

The Federal Circuit affirmed because "the only references in the specification to ‘control means’ are a box labeled ‘control’ … and a statement that the (control) ‘may be controlled automatically by known differential pressure, valving and control equipment." In other words, a "bare statement (in the specification) that known techniques or methods can be used does not disclose structure" and fails to support a means plus function claim.

Means plus function claims can be treacherous. Software claims, for example, may recite functional language but should be supported by at least one algorithm or decision tree structure in the specification. On the other hand, the Federal Circuit has found sufficient structure in terms that recite "sensor means" (any and all sensors that carry out the described measurement) and "circuit means" (a circuit that carries out the function).

 

Takeda Chemical Industries, Ltd. et al. v. Alphapharm Pty. Ltd et al.
Decided June 28, 2007
Judge Lourie with Judges Bryson and Dyk, Dyk concurring separately

It is still important to identify "a reason that would have prompted a person of ordinary skill in the relevant field to combine" prior art in an obviousness determination.

Takeda sued Alphapharm at the U.S. District Court for the Southern District of New York after Alphapharm filed an abbreviated new drug application at the FDA for the pharmaceutical pioglitazone. Judge Denise Cote found the patent not-invalid on obvious grounds because: 1) Alphapharm failed to prove motivation in the prior art for combination of a known compound; 2) the prior art taught away from the invention; and 3) the invention showed unexpected results of non-toxicity. Alphapharm appealed to the Federal Circuit.

Although the district court decided this obviousness case before the Supreme Court’s KSR decision, the Federal Circuit confirmed that as long as the teaching/suggestion/motivation test ‘is not applied as a ‘rigid and mandatory formula,’ that test can provide ‘helpful insight’ to an obviousness inquiry." Further "it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound." Judge Dyk separately concurred to point out that unexpected results did not cover two of the narrower claims, which should be held invalid.

This case reassures that teaching away, unexpected results, and the need to show a reason to make a combination of prior art, continue to dominate obviousness determinations. The recent KSR case did not suddenly weaken existing patent claims via a drastic change in obviousness law.

 

China Healthways Institute, Inc. v. Xiaoming Wang
Decided June 22, 2007
Judge Newman with Judges Friedman and Rader

In determining likelihood of trademark confusion "[i]t is incorrect to compare marks by eliminating portions thereof and then simply comparing the residue."

China Institute sold electric massagers under the "Chi" trade name and opposed Wang’s trademark application for "CHI PLUS" to cover Wang’s later marketed electric massager. The US PTO Trademark Trial and Appeal Board denied China Institute’s opposition. China Institute appealed to the Federal Circuit.

The Federal Circuit reversed because "the word ‘Chi’ is a significant component of these marks when viewed in their entirety." Furthermore, the "addition of the word ‘PLUS’ in Wang’s mark is unlikely to avoid the confusion for (because) ‘Plus’ ordinarily connotes a superior product, not one from a different source."

The PTO seemed to have over-relied on the generic meaning ("vital energy and vital force") of the word "chi." Another problem was that the PTO did not consider evidence of trademark confusion because China Institute failed to file that evidence at the proper time.

 

Michael Bender v. Jon W. Dudas, Director, US PTO
Decided June 21, 2007
Judge Rader with Judges Plager and Linn

A patent attorney or agent cannot receive compensation from another "without the consent of the practitioner’s client after full disclosure."

The PTO Office of Enrollment and Discipline found attorney Bender guilty of violating numerous PTO rules and decided to exclude him from patent practice. Bender appealed to the U.S. District Court for the District of Columbia and then to the Federal Circuit.

The Federal Circuit affirmed, while noting several wrong acts. Bender’s "engagement letter was an entirely hollow and formalistic gesture" and Bender had participated in a fraudulent scheme to embellish and file many design patent applications in assisting an invention promotion company’s money back guarantee. In particular, Bender violated 37 CFR 10.77(c) by receiving payment for patent work without full disclosure of that payment to his clients.

Non-patent attorney managers should not be allowed to control the business and client relationships of patent attorneys.

 

Entegris, Inc. v. Pall Corporation
Decided June 13, 2007
Judge Moore with Judges Gajarsa and Linn

A prior art reference found after issuance of a preliminary injunction can be used to dissolve the injunction.

Entegris sued Pall at the U.S. District Court for the District of Massachusetts for allegedly infringing claims to filtration systems. Judge George O’Toole, Jr. granted Entegris a preliminary injunction. The court held Pall in contempt for selling a designed around product that still infringed, but also dissolved the injunction because Pall presented a prior art reference from Japan that appeared to anticipate Entegris’s patent. Both sides appealed.

The Federal Circuit dismissed Pall’s appeal against the contempt finding because "the final judgment rule is not satisfied" as the court order did not end the litigation. The Federal Circuit affirmed dissolving the preliminary injunction because the new prior art "raises a substantial question regarding invalidity."

Much prior art may be found buried in another language and in another country. A defendant should not give up looking for a silver bullet to invalidate a patent.

 

William P. Young v. Lumenis, Inc.
Decided June 27, 2007
Judge Lourie with Judges Prost and Moore

The meaning of a "word of degree" such as "near" used in a claim may be determined by contextual usage in the claim and the specification.

Young sued Lumenis at the U.S. District Court for the Southern District of Ohio for alleged infringement of claims to a method of de-clawing a cat by cutting "near the edge of the ungula crest of the claw." Judge Algenon Marbley considered expert witness testimony from an author of a prior art reference that Lumenis submitted to the PTO during reexamination. The court declared the claims indefinite because the word "near" is ambiguous. The court also found the patent unenforceable due to inequitable conduct surrounding how Young presented the reference and court testimony to the PTO. Young appealed to the Federal Circuit.

The Federal Circuit reversed the invalidity holding because the term "near" was determined from simply reading the claims and the specification. The Federal Circuit reversed the inequitable conduct holding because Young’s allegedly misleading statement to the PTO about the reference was merely "attorney argument …not gross mischaracterizations or unreasonable interpretations of (the reference)" and Young’s alleged omission of that art to the examiner "was cured by a timely submission" before a second office action.

This case was complicated by a co-pending reexamination at the PTO and by extensive, persuasive court testimony from the author of newly discovered prior art. The Federal Circuit was not so enamored by the witness testimony but relied heavily on intrinsic evidence.

 

Honeywell International Inc. et al. v. Universal Avionics Systems Corp. et al.
Decided May 25, 2007
Judge Rader with Judges Gajarsa and Dyk

 "[T]he specification usually supplies the best context for deciphering claim meaning” when a claim term has “no ordinary meaning.”

Honeywell sued Universal at the U.S. District Court for the District of New Jersey for alleged infringement of claims to “look ahead” “ground collision warning systems for aircraft.  Judge Mary Thynge interpreted numerous claim terms that lacked plain meanings and found no infringement.  Honeywell appealed.

The Federal Circuit vacated “the claim construction of a few terms” and remanded, noting that “the district court unduly narrowed the claim based on its overall perception of the invention.” 

A patent drafter should be careful to provide broad descriptions of new, unfamiliar terms because district courts like to look for a “gist” of the invention and may interpret the terms narrowly based on this gist. 

 

Robert D. Brand et al. v. Thomas A. Miller et al.
Decided May 14, 2007
Judge Dyk with Judges Michel and Archer

When the PTO adjudicates contested cases, the PTO must “base its factual findings” on “evidence in the record” and not the PTO’s own expertise.

In a patent priority interference contest between Brand and Miller, the PTO concluded that Brand derived its claimed invention from Miller.  Brand appealed to the Federal Circuit.

The Federal Circuit reversed because “[the] board’s conclusion … was not supported by any citation in the record.”

It is important to build an evidentiary record at the PTO to base conclusions on, particularly if one expects an appeal.


 

Motionless Keyboard Company v. Microsoft et al.
Decided May 29, 2007
Judge Rader with Judges Dyk and Moore

“Public use” of an invention for invalidation under 102(b) is limited to use of the invention “for its intended purpose.”

Motionless sued Microsoft and others at the U.S. District Court for the District of Oregon, over alleged infringement of a keyboard with a “cluster of keys” within a “concavity” of the surface.  Judge Ann Aiken found no infringement because the accused devices lacked surface cavities.  However, the patents were found invalid on 102(b) public use grounds because the inventor had shown his keyboards to others more than one year before his filing date.  Motionless appealed to the Federal Circuit.

The Federal Circuit reversed the invalidity holding because the inventor’s unprotected public disclosures only “visually displayed the keyboard design without putting it into use.”

The inventor in this case stayed out of trouble by obtaining a non-disclosure agreement on the same day that he tested for his intended use with a professional typist.  Non-disclosure agreements are helpful to prevent 102(b) public use bars before filing a patent application.

 

Henkel Corporation v. The Procter & Gamble Company
Decided May 11, 2007
Judge Linn with Judges Gajarsa and Moore

In determining conception for proving early invention, a court does “not require that ….(one recognizes) the exact language of the ultimate court- only the subject matter of the invention.”

Henkel and Proctor fought a first to invent battle at the PTO over an invention of a dishwashing tablet having a “compressed region” with a “faster rate” of dissolving as measured a certain way.  The Board of Patent Appeals and Interferences found that  Henkel’s inventors (who merely observed the invention visually) failed to measure a greater dissolution rate compared to a control, prior to Proctor’s conception and reduction to practice date.  Henkel appealed.

The Federal Circuit found that the PTO erred and vacated. The court pointed out that “[t]he limitation in question is a discernable property of the invention that was directly observed…(and) an inventor can demonstrate appreciation without enunciating the precise language of the interference count.”

A patent claim (or interference count in a first to invent contest) often recites specific details such as how to measure a particular property, or a quantitative limit.  An inventor may not have to recognize such detail to obtain an early conception date, however.

 

Lawrence I. Wechsler v. Macke International Trade, Inc. et al.
Decided May 18, 2007
Judge Prost with Judges Mayer and Gajarsa

“Normally, if the patentee is not selling a product, by definition there can be no lost profits.”

Wechsler successfully sued Macke at the U.S. District Court for the Central District of California for infringement of patent claims to a cat watering dish.  Wechsler, which did not sell its patented product during the infringing time period, nevertheless won damages for lost profits.  Both sides appealed various issues to the Federal Circuit.

The Federal Circuit reversed the award of lost profits because “the burden on a patentee who has not begun to manufacture the patented product” to obtain lost profit, “is commensurately heavy.”  Notably, Wechsler admitted that it was unable to manufacture the product during the infringement period.  Judge Mayer dissented because Wechsler was preparing to enter the market during the infringing period, a fact which might support a lost profits theory. 

Determination of sufficient damages is very important when deciding to start litigation and often is difficult to prove during litigation.

 

KSR International Co. v. Teleflex Inc. et al
Decided April 30, 2007
The U.S. Supreme Court

"The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."

The Supreme Court declared in this decision that a claim can be proved obvious without a showing of motivation or suggestion to combine claim elements. A challenger now can more easily rely on other art and other problems/solutions of others to prove obviousness. Furthermore, obviousness can be proven if a combination was "obvious to try" and if the results were expected.

Teleflex obtained patent claims to an adjustable pedal system for cars using a "fixed pivot" for a sensor. Teleflex sued KSR for infringement but KSR won summary judgment of invalidity because adding a sensor to a fixed pivot point was obvious in view of similar solutions in other art. The Federal Circuit reversed, however, because the district court failed to point to specific motivation for combining the claim elements. KSR appealed to the Supreme Court.

The Supreme Court reversed and remanded because "the Federal Circuit addressed the obviousness question in a narrow, rigid manner that is inconsistent with 103…" While agreeing with use of the motivation - suggestion test as one way to prove obviousness, the Supreme Court explained that an obviousness challenge is not limited to "the problem the patentee was trying to solve" or to "only those prior art elements designed to solve the same problem."

A theme in the obviousness calculus is whether the claimed combination yielded predicable results. The Federal Circuit also relied on this theme in the recent Pfizer v. Apotex case pdf and was not far away from the Supreme Court’s view. Practitioners should carefully look for and document unexpected results as well as teaching away by others when obtaining and defending broad claims.

 

Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. et al.
Decided May 9, 2007 pdf
Judge Lourie with Judges Mayer and Dyk

An "adaptation of an old idea or invention…using newer technology that is commonly available and understood in the art" is obvious.

Leapfrog sued Fisher at the U.S. District Court for the District of Delaware for allegedly infringing claims to a child’s toy that uses electronic sensing to detect a child’s response to letters and pictures. Judge Gregory Sleet found invalidity on obviousness grounds and Leapfrog hopped to the Federal Circuit.

This is the first obviousness case from the Federal Circuit following the Supreme Court’s KSB decision. The Federal Circuit confirmed obviousness because patentee Leapfrog failed to present evidence that inclusion of a new element to an old combination for its invention "was uniquely challenging or difficult for one of ordinary skill in the art." The Federal Circuit also mentioned that the patentee failed to "present any evidence that the inclusion…represented an unobvious step over the prior art" and thus seemed to be looking for an "inventive step" argument such as what we use in European practice.

Practitioners should gather and assert evidence that an inventive combination provides unexpected results, using devices and methods in unorthodox ways. Obviousness fights will require more fact-based trench fighting over unexpected results, unexpected devices and methods to solve problems, and unexpected functioning of those devices and methods.

 

Central Admixture Pharmacy Services, Inc. v. Advanced Cardiac Solutions, P,C.
Decided April 3, 2007 pdf
Judge Gajarsa with Judges Schall and Prost

"[I]f a certificate of correction broadens a claim, it is only valid if it corrects a ‘clerical or typographical’ error that would have been clearly evident…"

Central obtained claims to a heart treatment fluid having certain "osmolarity" concentrations of salts. Central then obtained a certificate of correction from the PTO, which replaced (and slightly broadened) the concentration term "osmolarity" with "osmolality." Central sued Advanced at the U.S. District Court for the Northern District of Alabama for allegedly infringing these claims and Judge Viriginia Hopkins granted summary judgment of willful infringement. Advanced advanced to the Federal Circuit.

The Federal Circuit found the certificate of correction from the PTO invalid and reversed. Advanced had provided a clear and convincing showing for the two part test for invalidating a certificate of correction, namely that: 1) "the corrected claims are broader than the original claims;" and 2) the clerical or typographical error…is not clearly evident to one of skill in the art."

The intense illumination of an inter partes lawsuit often is required to fix mistakes made during quiet, one sided ex parte argument at the PTO.


Acumed LLC, v. Stryker Corporation et al.
Decided April 12, 2007 pdf
Judge Gajarsa with Judges Linn and Moore, Moore partially dissenting

A patentee cannot expect an automatic injunction upon winning an infringement litigation.

Acumed sued Stryker at the U.S. District Court for the District of Oregon for infringing orthopedic devices that have a "curved shank" for insertion into bone. A jury found willful infringement and Judge Anna Brown imposed a permanent injunction against Stryker. Stryker appealed.

The Federal Circuit vacated the permanent injunction because the district court had not applied "the traditional four-factor test for injunctions" which "applies to patent cases" as clarified by the Supreme Court’s Ebay decision. Judge Moore dissented on a claim construction holding with an argument that the district court improperly used a dictionary as a starting point of claim construction.

Willfulness was found in this case because the plaintiff’s patent attorneys had concluded that the accused product infringed, before obtaining a non-infringement opinion. Non-infringement opinions are more helpful when obtained early and actually relied on.



In Re Reed Elsevier Properties Inc.
Decided April 12, 2007 pdf
Judge Mayer with Judges Schall and Bryson

A trademark evincing "congruency between the genus of services" and "the nature of the relevant public’s understanding of the services" is generic and unregistrable.

The PTO Trademark Trial and Appeal Board refused to register Reed’s mark "LAWYERS.COM" for an online interactive database regarding legal news and services because the mark was generic. Reed appealed.

This mark met the Federal Circuit’s two part generic test: 1) "what is the genus of goods or services at issue;" and 2) "is the term….understood by the relevant public primarily to refer to that genus of goods or services?" The court reviewed evidence from web sites for the two part test.

 

Pods, Inc. v. Porta Stor, Inc. et al.
Decided April 27, 2007 pdf
Judge Dyk with Judges Lourie and O’Malley

"[O]nce an argument is made regarding a claim term so as to create an estoppel, the estoppel will apply to that term in other claims."

Pods sued Porta at the U.S. District Court for the Middle District of Florida for alleged infringement of claims to a container lifter with a "frame" that can be "lowered around the container." Judge Mark Pizzo granted judgment as a matter of law for infringement of three claims. Porta appealed.

The Federal Circuit reversed judgment of infringement under the doctrine of equivalents for two of the claims. An argument made during prosecution regarding "carrier frame" to overcome a rejection of another claim was deemed to estop infringement of these other claims, which recited "carrier frame.".

Patent practitioners must be careful with arguments made at the patent office during prosecution. Opponents may strongly re-construe claim meaning based on such arguments during litigation.

 

Bass Pro Trademarks, LLC v. Cabela’s Inc.
Decided April 6, 2007 pdf
Judge Newman with Judges Clevenger and Dyk

Patent prosecution history is important to claim construction.

Bass obtained patent claims for a "combination vest and pivotable seat member" and settled an infringement litigation over the claims against Cabela’s use of a similar vest-seat combination. Two years after their settlement and Consent Judgement, Cabela began selling a folding seat attached to the back of a garment. Bass convinced Judge Richard Dorr to issue a contempt judgment over sales of the new design and Cabela appealed to the Federal Circuit.

The Federal Circuit reversed because during patent prosecution, Bass had emphasized "applicant’s unique combination of vest and pivotable seat member" and the claims were thereby limited to devices made with a regular vest.

Skillful patent prosecution is necessary for any patent that might be litigated. Arguments easily made by letter to the PTO without extensive deliberation can be as important to claim meaning as a well reasoned and deliberated claim term.

 

Intamin Ltd. v. Magnetar Technologies, Corp.
Decided April 18, 2007 pdf
Judge Rader with Judges Plager and Prost

"[A] narrow disclosure in the specification does not necessarily limit broader claim language."

Intamin sued Magnetar at the U.S. District Court for the Central District of California for allegedly infringing claims to a magnetic braking system for an amusement park ride. Judge Gary Feess granted summary judgment of no infringement of claims to "magnet elements" with "an intermediary" between them, because the accused device lacked an intermediary. Inamin appealed to the Federal Circuit.

The Federal Circuit reversed because the district court unnecessarily limited the meaning of "intermediary" to a described "embodiment" in the specification. Although other "embodiments" were not provided, there was no particular reason to limit the meaning to the embodiment.

The patentee did not rely on the contested claim term during prosecution and did not exhort the invention’s advantage via this term in the specification and thus did not limit the claims to the embodiment.

 

Pfizer, Inc. v. Apotex, Inc.
Decided March 22, 2007   pdf
Judge Michel with Judges Mayer and Linn

 “[O]bviousness cannot be avoided simply by a showing of some degree of unpredictability in the art so long as there was a reasonable probability of success.”

 Pfizer patented the active ingredient in Norvasc™ and sued Apotex at the U.S. District Court for the Northern District of Illinois after Apotex filed an Abbreviated New Drug Application for a generic version of the drug.  Judge James Rosenbaum found no invalidity and enjoined Apotex from making or selling the product.  Apotex appealed to the Federal Circuit.

 The Federal Circuit found the claims, which recite a novel salt of a known drug, obviousness and reversed.  Motivation was found from routine “optimization of a range or other variable within the claims.”  The court noted that 53 different recommended salts had been tested to find the one inventive salt, and skilled artisans already knew to carry out this routine optimization of a known, desirable variable.

 The Federal Circuit reviewed the motivations and “research” plan logic of “scientists” in deciding obviousness of so-called “research.”  Much of what is called “science” is routine optimization or “engineering.”

 

Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc.
Decided March 20, 2007  pdf
Judges Rader, Schall and Prost\

 A 112 amendment that was filed “only for the purpose of better description” may act as doctrine of equivalents estoppel.

 Cross sued Medtronics at the U.S. District Court for the Central District of California for allegedly infringing claims to screws.  The claims had been amended to recite a “thread depth” limitation.  Judge Gary Taylor found infringement under the doctrine of equivalents by an accused screw having a different thread depth, which Medtronics had redesigned to avoid the claims.   Medtronic appealed.

 The Federal Circuit reversed the infringement decision because “the thread depth limitation was added to capture the manner” of operation to overcome 112 rejections.  Judge Rader separately concurred to emphasize his view that the “tangential relation” exception to estoppel for avoiding the doctrine of equivalents runs “counter to principles of public notice” and is “very narrow.”

 Doctrine of equivalents cases seem very difficult to win.  A practitioner should describe and claim as many embodiments as possible to get broad literal protection.

 

Teva Pharmaceuticals USA Inc. v. Novartis Pharmaceuticals Corp. et al
Decided March 30, 2007  pdf
Judge Gajarsa with Judges Friedman and Mayer, who concurs separately

 To get jurisdiction for declaratory judgment, there must be “a substantial controversy, between the parties having adverse legal interests…” 

Teva, a generic patent maker, filed an Abbreviated New Drug Application, which asserted that Novartis’s Famvi™ composition patent is invalid.  After Novartis responded with a lawsuit, Teva filed a declaratory judgment (“DJ”) action at the U.S. District Court for the District of New Jersey against Novartis’s four other method patents for the same drug.  Judge Jose Linares dismissed because Teva lacked reasonable apprehension of suit from Novartis on the method patents.  Teva appealed to the Federal Circuit.

 The Federal Circuit reversed, because the Supreme Court has rejected the “reasonable apprehension test” for establishing jurisdiction for a DJ action.  Under the new, alternative test, a party seeking to attack a patentee for a DJ of patent invalidity merely has to show “a substantial controversy, between the parties having adverse legal interests.”

 We may see more declaratory judgment actions brought against patentees.
 

In Re. Princo Corporation and Princo America Corporation
Decided March 1, 2007  pdf
Judge Dyk with Judges Bryson and Linn

Litigation of issues that also are under review at the ITC should be stayed “until the Commission proceedings are no longer subject to judicial review.” 

Philips sued Princo at the U.S. District Court for the Southern District of New York for alledged infringement of patents from a patent pool that cover CD manufacture.  Princo responded by arguing that 4 of the patent pool patents were not “essential” to CD manufacturing and thus were illegally tied to the pool.  Later, the International Trade Commission began an investigation into possible illegal tying, and Judge Charles Brieant, Jr. stayed the litigation, under rule 1659.  Princo lost and the ITC entered a future exclusion order against Princo, which will become appealable.  The district court lifted the stay, and Princo asked the Federal Circuit for a writ of mandamus to order the district to stay the case.

 The Federal Circuit agreed and ordered the district court to stay the case “until related proceedings before the Commission, including any appeals, become final.”

 Litigants should consider how review by a government agency (ITC review of antitrust, PTO reexamination for example) can generate useful evidence, stay a case or even settle an issue in the litigation.

 

Nourie E. Hakim v. Cannon Avent Group et al.
Decided February 23, 2007  pdf
Judge Nnewman with Judges Michel and Rader

 “[A]n applicant cannot recapture claim scope that was surrendered or disclaimed” without having an examiner revisit the issue.

 Cannon obtained a second, broader patent to a leak proof drinking cup by filing a continuation application, replacing “slit” (which had been added to overcome prior art in the parent application) with the broader term “opening.”  Cannon asserted the broader patent at the District Court for the Western District of Louisiana against Hakim, which sells a cup having a hole with a similar purpose.   Judge Robert James held summary judgment of non infringement because prosecution history from the parent application indicated that the invention is a cup with a “slit.”  Cannon appealed.

 The Federal Circuit affirmed, noting that “[a]lthough a disclaimer made during prosecution can be rescinded….the prosecution history must be sufficiently clear to inform the examiner” to review the issue again.

 Courts are smart enough to see past self-serving comments put into the record.  A practitioner should get the PTO examiner to make desirable comments about how novel and broad the invention is.

  

Sandisk Corporation, v. Stmicroelectronics, Inc. and Stmicroelectronics NV.
Decided March 26, 2007  pdf
Judge Linn with Judges Bryson and Dyk, Bryson concurring separately

 A party does not need “reasonable apprehension” of a lawsuit from a patentee to assert a declaratory judgment action against the patentee.

 ST contacted a competitor (Sandisk) in the flash memory chip market for possible cross licensing.  During negotiations, ST’s technical experts identified specific claims of ST’s patents and identified SanDisk’s products that are covered by those claims.  Discussions broke off and SanDIsk sued ST at the U.S. District Court for the Northern District of California for summary judgment of non-infringement and patent invalidity.  Judge Jeremy Fogel, noting that ST had orally assured SanDisk that ST would not sue, dismissed the case for lack of reasonable apprehension on the part of SanDisk as needed to establish jurisdiction for a declaratory judgment suit. 

 SanDisk appealed to the Federal Circuit, which reversed because the Supreme Court recently (MedImmune v. Genentech) rejected the federal circuit’s legal requirement of a “reasonable apprehension of immediate lawsuit” to establish jurisdiction for a preemptive declaratory judgment action.  The Supreme Court clarified that merely a “substantial controversy” is required.  In his concurring opinion, Judge Bryson repeated that “where a patentee asserts rights under a patent based on certain identified ongoing or planned activity of another party, and where that party contends that it has the right to engage in the accused activity without a license, the party may bring a declaratory judgment action.”

 A would be licensee now can more easily attack a patentee by filing a declaratory judgment action at a court of its choosing, and a patentee has to be more careful when contacting a possible infringer.  Under the new rule, a patentee might still avoid trouble by: 1. not identifying any ongoing or planned activity of the other party when informing the other side of the patent; and/or by 2. executing a confidentiality agreement with the other party before identifying any ongoing or planned activity by the other party.  In other words, a patentee might still provide notice of a patent to a possible infringer, but should not “assert rights under” the patent” by identifying any specific product or activity of the other party.  Furthermore, an unwillingness of the other party to execute a confidentiality agreement with a patentee should be an early sign that the other side prefers to litigate instead of licensing an infringed patent.

 

Espeed, Inc. et al. v. Brokertec USA et al.
Decided March 20, 2006  pdf
Judge Moore with Judges Linn and Dyk

 Declarations filed at the PTO to overcome rejections may be carefully scrutinized for flaws during litigation. 

Espeed sued Brokertec at the U.S. District Court for the District of Delaware for allegedly infringing claims to an automated trading method for fixed income securities.  Judge Kent Jordan found inequitable conduct from a lengthy declaration that Espeed filed at the PTO to get claims allowed, and declared the asserted patent unenforceable.  Espeed appealed to the Federal Circuit.

 The Federal Circuit affirmed because Espeed failed to disclose to the PTO that Espeed publicly had used the claimed system more than one year before the priority date.  Espeed belatedly had refiled its application with a 1138 page declaration, which referred to the earlier use, explained that the inventor did not know his duty to disclose, but that the earlier use was not the claimed system anyway.  However, the Federal Circuit agreed with the district court that the declarations materially misrepresented the earlier use and intentionally “were worded in a way to make the examiner believe that there were no (claimed features in the earlier) system.”

 The declaration filed at the PTO further damaged the patentee’s litigation by including an opinion about patent law and thereby waiving attorney client privilege.  Declarations are a deceptively easy way to overcome rejections at the PTO but can become an Achilles heel during litigation against an overachieving opponent. 

 

Merck & Co., Inc., v. Hi-Tech Pharmacal Co., Inc.
Decided March 29, 2007  pdf
Judge Linn with Judges Friedman and Plager

Patent term extensions “may be applied to a patent subject to a terminal disclaimer.”

 Merck filed a terminal disclaimer for a second patent that claimed ingredients in the drug Trusopt™.  The first patent expiration date was reset when U.S. law changed from GATT and Merck obtained a 4 year extension from the terminally disclaimed date.   Hi-Tech, a generic drug maker, later filed an abbreviated new drug application, which asserted that Merck’s patent had expired because the extension period was not effective.

 Merck responded by suing Hi-Tech at the U.S. District Court for the District of New Jersey, where Judge Mary Cooper enjoined Hi-Tech from commercialization until the end of the contested patent term extension.  Hi-Tech appealed to the Federal Circuit, which affirmed, noting that “the patent term shall be extended if the requirements …are met.” 

 A practitioner carefully should review patent term extensions due to regulatory delay and to delay in the patent office when a patent issues.
 

Liebel-Flarsheim Company et al. v. Medrad, Inc.
Decided March 22, 2007  pdf
Judge Lourie with Judges Rader and Bryson

“Be careful of what one asks for” when seeking overly broad claims at the patent office that cannot be defended on written description or enablement grounds during litigation.

 Liebel filed patent applications for a “pressure jacketed” syringe that can handle high pressure, but then deleted references in the claims to “pressure jacket” when a competitor, Medrad, began selling a jacketless injector.  During litigation at the U.S. District Court for the Southern District of Ohio, Medrad convinced Judge Sandra Beckwith of patent invalidity because Liebel’s claimed jacketless embodiment lacked written description support in the specification and was not enabled.  Both parties appealed various issues. 

 The Federal Circuit affirmed.  This opinion affirmed that enablement must cover the breadth of the claims.  Lack of written description was evinced by statements in the specification that led away from the jacketless embodiment, and lack of enablement was confirmed by evidence that the inventors could not make a jacketless device.

 Sometimes an aggressive applicant can obtain unusually broad claims at the PTO.  Courts, with the help of overachiever opponents in the private sector are not so easily fooled.

 
Aquatex Industries, Inc. v. Techniche Solutions
Decided February 27, 2007   pdf
Judge Dyk with Judges Rader and Whyte


Application of the doctrine of equivalents to a claim for a material is not barred by prosecution history for a method claim.

 Aquatex sued Techniche at the U.S. District Court for the Middle District of Tennessee for allegedly infringing claims to methods for evaporative cooling via use of “fiberfill batting material” used in clothing.  Judge Robert Echols granted Techniche summary judgment of no infringement under the doctrine of equivalents because Aquatex had added the term “by evaporation” during prosecution.  Aquatex appealed. 

 The Federal Circuit held that the district court improperly relied on an unclaimed material to estop an equivalents finding but affirmed summary judgment anyway because the plaintiff did not produce evidence to support attorney arguments.  AquaTex “provided no particularized testimony from an expert…that addressed …equivalents on a limitation by limitation basis” but had merely “provided lawyer argument and generalized testimony” and the Federal Circuit agreed to the summary judgment on this basis.

 Infringement under the doctrine of equivalents often requires extensive factual determinations and is rarely proven.  In this case the plaintiff seemed to have a case but failed to present correct evidence to survive summary judgment.

 

Cargill, Incorporated v.  Canbra Foods, Ltd. et al.
Decided February 14, 2007    pdf
Judge Jordan with Judges Linn and Prost

 A patent applicant may have an obligation to provide contradictory test data to the PTO when relying on data to overcome scientific logic.

 Cargill obtained patent claims to a highly stable oil, after overpowering an examiner’s scientific argument with facts that showed the oil’s stability came did not come from a fat composition as found in the prior art.  Later, during litigation at the U.S. District Court for the Southern District of Ohio against Medrad, Medrad convinced Judge Sandra Beckwith that the patent unenforceable because Cargill fraudulently procured the patent by not revealing test data to the PTO that confirmed the examiner’s arguments.  Cargill appealed to the Federal Circuit. 

The Federal Circuit affirmed because the data concerned a “crucial issue during prosecution” over a scientific rejection that was made 5 times.  The court pointed out that “materiality is determined from the viewpoint of a reasonable patent examiner, and not the subjective beliefs of the patentee.”  The Federal Circuit noted that the examiner changed his scientific understanding based on the incomplete data that Cargill filed at the patent office.

 One can overcome a rejection at the PTO easily by filing an unchallenged statement of scientific data, but sloppy or misleading statements can be caught by opponents during litigation.  The system relies on litigation to keep patent applicants honest at the PTO.

 

E-Pass Technologies, Inc. v. 3Com Corporation et al.
Decided January 12, 2007   pdf
Judge Linn with Judges Michel and Prost

Method claim steps that refer to completed results must be performed in order and “could only be infringed by a user, not the manufacturer.”

 E-Pass sued 3Com at the U.S. District Court for the Northern District of California for allegedly infringing method claims for an “electronic…card” that acts as multiple credit cards.  Judge D Lowell Jensen granted 3Com summary judgment of non-infringement after determining that no customer directly infringed by practicing all the recited steps.  3Com appealed. 

The Federal Circuit affirmed, noting that the claim term “card…is a straightforward name for an everyday object,” which requires a “straightforward” analysis “using the plain meaning.”  The claimed method, however, recited steps that “refer to the completed results of the prior step” but the defendants at most, “taught their customers each step of the claimed method in isolation.”  Accordingly, no jury could find infringement.

Information technology inventions are deceptively easy to claim with simple words like “card.”  A patent drafter should try to anticipate how a court would view such words and perhaps provide explicit meaning in a patent specification.

Propat International Corp., et al. v. Rpost, Inc. et al.
Decided January 4, 2007  pdf
Judge Bryson with Judges Mayer and Newman

 A “right to sue clause in a contract, unaccompanied by the transfer of other incidents of ownership” (such as an unrestricted right to sub-license) does not give a licensee the right to sue.

Propat, under a patent license agreement from Authentix, sued Rpost at the U.S. District Court for the Central District of California for alleged infringement.  Judge James Selna dismissed the suit because Propat lacked standing since Propat’s license restricted Propat’s ability to transfer ownership and required Authentix’s permission for filing suit.  Both sides appealed various issues to the Federal Circuit.

 The Federal Circuit affirmed because Propat “lacks…the right to transfer its ownership interest.”  The court also noted that Propat could not even keep the case alive by joining the patent owner because Propat lacked “a legally protected interest in the patent” as the license agreement did not give an exclusive right to use the invention.

 Licensors often withhold sub-licensing rights from a licensee or even can take back rights based on a performance criteria of a licensee.  Such restrictions are incompatible with license terms that grant the right to sue others under the patent.

 

Abbott Laboratories, v. Andrx Pharmaceuticals, Inc.
Decided January 5, 2007  pdf
Judge Prost with Judges Michel and Ellis

 “The claims themselves provide substantial guidance as to the meaning of particular claim terms.”

Abbott sued Andrx at the U.S. District Court for the Northern District of Illinois for alleged infringement of claims to extended release forms of the drug clarithromycin that contains a “pharmaceutically acceptable polymer.”  Judge David Coar granted Abbott a preliminary injunction from a likelihood of proving infringement under the doctrine of equivalents.  Andrx appealed to the Federal Circuit.

 The Federal Circuit affirmed, with a broader claim definition based on claim differentiation (a narrower dependent claim broadly recited “water-soluble polymer”).

 A practitioner should draft dependent claims with added, broad terms to breathe life and broader meaning to antecedent terms used in independent claims.  The Federal Circuit seemed to have responded favorably to such dependent claims in this instance. 

 

RFR Industries, Inc. v. Century Steps, Inc.
Decided February 16, 2007  pdf
Judge Prost with Judges Michel and Schall

 To support an award of attorney’s fees, “a dismissal (from district court) must …constitute a judicially sanctioned change in the legal relationship of the parties.”

 RFR sued Century at the U.S. District Court for the Northern District of Texas for allegedly infringing claims to an embedded railway track system.  RFR requested a dismissal before Century answered but Judge Ed Kinkeade denied RFR’s motion because Century had faxed in an answer before the dismissal request.  The court granted Century summary judgment of patent exhaustion and attorney’s fees.  RFR appealed.

 The Federal Circuit vacated and reversed the attorney’s fees, noting that “Federal Rule of Civil.Procedure 5(b)(2) permits service by fax only when it is ‘consented to in writing by the person served.’”  RFR never gave approval for fax service in writing, so the early fax response was not a response prior to RFR’s motion to drop the lawsuit. 

Sometimes it is not a good idea to start a lawsuit.  The patentee in this case stopped the suit barely in time.

 
 

Walter Kidde Portable Equipment, Inc. v. Universal Security Instruments, Inc.
Decided March 2, 2007  pdf
Judge Jordan (sitting by designation) with Judges Gajarsa and Moore

 A district court has “broad discretion in granting voluntary dismissals, even if the plaintiff receives a tactical advantage in (a) second action.”  

 Kidde sued USI at the U.S. District Court for the Middle District of North Carolina for allegedly infringing patent claims to a smoke detector, but abandoned the case during discovery and re-filed, because of ambiguities about patent ownership.  Several complicated procedural issues were appealed, including an argument that Judge N Carlton Tilley Jr. had improperly dismissed anti-trust and patent misuse counterclaims.

The Federal Circuit found that the district court improperly had dismissed the counterclaims because those claims did not require patent ownership by the plaintiff.  However, those errors were harmless and the decision was affirmed, because USI could reassert the claims and benefit from the discovery, in a subsequent re-filed action. 

Much of the cost and complexity of this case could have been avoided if patent ownership changes had been carefully recorded at the PTO.

 
 

In Re. Arnold B. Serekin
Decided March 6, 2007  pdf
Judge Lourie with Judges Schall and Gajarsa

 “[T]he deliberate action of an inventor or attorney during prosecution generally fails to qualify as a correctable error under 251 (the reissue statute).”

 Serenkin filed a PCT application from his provisional application but forget to include the figures.  The PCT receiving office offered to give him a new date upon receipt of the figures or to keep the original priority date, without figures.  His attorney reluctantly chose the new date.  After obtaining a U.S. patent, Serenkin filed for a reissue application, asserting that the choice of the later date was an error.  The PTO rejected the reissue application and Serenkin appealed.

The Federal Circuit affirmed.  The court noted that “reissue is appropriate to perfect priority claim where patentee substantially complied with …requirements but inadvertently omitted the filing dates from prior applications” but that  reissue is not suitable to correct a “deliberate, but subsequently found to be disadvantageous choice.”

 The PTO sometimes lets an applicant add figures from a priority document to an application after filing to correct an error.  The PTO has less flexibility when following PCT rules, however.

 

Firsthealth of the Carolinas, Inc. v. Carefirst of Maryland, Inc.
Decided February 27, 2007  pdf
Judge Linn with Judges Bryson and Gajarsa

 Failure to meet a deadline at the Trademark Trial and Appeal Board due to “sloppy practice or inattention to deadlines” is not excusable.

 CareFirst opposed FirstHealth’s intent-to-use trademark applications for “FIRSTCAROLINACARE.”  FirstHealth responded by counterclaiming for cancellation of CareFirst’s trademark “CAREFIRST,” based on uncontrolled licensing and use.  During their battle at the PTO, FirstHealth accidentally missed a deadline for requesting extension of its testimony period.  The PTO refused FirstHealth’s request for an extension because the excuses given (an attorney having a baby and a docketing error by a new paralegal) were not “excusable neglect.”  Without the missing testimony FirstHealth lost and appealed to the Federal Circuit.

 The Federal Circuit affirmed the PTO’s refusal.  The court followed the Supreme Court’s guidance that a party’s “excusable neglect” is determined in part by whether the delay “was within the reasonable control of the movant.”  In this case, FirstHealth could have had another attorney manage the legal action while the original attorney was attending to a baby.

 One should be polite and cooperative when dealing with the PTO because the PTO has considerable discretion when enforcing its own rules.

 

Mymail, Ltd. v. America Online, Inc. et al.
Decided February 20, 2007  pdf
Judge Bryson with Judges Newman and Schall

In the claims, a “coined term, without a meaning apart from the patent” requires interpretation from the specification.
“[F]raud relating to patent ownership” cannot “be raised as a defense in federal court.”

Mymail sued AOL at the U.S. District Court for the Eastern District of Texas over method claims for providing internet access when away from home.  The claims recite registering into a “network service provider” that contacts another “access” provider, which in turn provides login info for a more convenient provider of services.  Judge Leonard Davis construed “network” service provider as “authenticating users by checking ID and password,” but found no infringement because the accused did not carry out this authentication.  Mymail appealed to the Federal Circuit.  Some defendants cross-appealed, arguing that Mymail did not have correct title to the patent and lacks standing.

The Federal Circuit affirmed non-infringement after reviewing the specification and noting that the term “network service provider” was new, and properly construed from the specification.  The court also affirmed that the defendants could not raise fraud issues over ownership in federal court because ownership is a state law issue.

New technical terms made from simple words often are found software patents.  These terms must be supported by broad definitions and examples in the specification.


 

Sevenson Environmental Services, Inc. v. Shaw Environmental, Inc.
Decided February 21, 2007  pdf
Judge Linn with Judge Dyk

 A contractor’s use of a patented invention “for the Government and with the authorization and consent of the Government’ is entitled to immunity from suit under 1.498(a).”

Shaw executed a clean up contract from the United States , which required Shaw to use phosphoric acid to treat environmental lead contamination.  This procedure was claimed in Sevenson’s patent.  Sevenson sued Shaw at the U.S. District Court for the Western District of New York but Judge Richard Arcara held summary judgment that the suit was barred by government contractor immunity under 28 U.S.C. 1498.  Sevenson appealed to the Federal Circuit.

 The Federal Circuit affirmed, noting that Sevenson could only sue the U.S. in the U.S. Court of Federal Claims.  Shaw’s contract specifically consented for “all use and manufacture, in performing this contract…of any invention described in and covered by a United States patent…whose use necessarily results from compliance by the Contractor or subcontractor with (I) specifications or written provisions forming a part of this contract.”  The contract thus met the conditions for immunity under the statute.

 A contractor who works for the federal government should have a contract that specifically authorizes use of necessary patented technology.



In Re. Bose Corporation
Decided February 8, 2006  pdf
Judge Lourie with Judges Rader and Schall

 Res judicata applies to trademark applications when “the parties and the marks were the same in both proceedings and …the functionality of the design” was reviewed.

 Despite an earlier failed attempt to register a pentagon shaped speaker cabinet with a bowed front edge in 1985 based on functionality, Bose filed again to register an “identical” mark in 1995.  Bose argued that the Supreme Court had since changed the legal standard for functionality of trade dress and that the “bowed edge” of the previous design was an “important factual difference” from the new mark, which has a “curved edge.”  The PTO Trademark Trial and Appeal Board rejected the application on res judicata grounds because the same mark had already been rejected.  Bose appealed.

 The Federal Circuit affirmed, noting that the “bowed edge” of the earlier application and the “curved edge” of the resubmitted application were the same, and that the relevant law had not changed.

  

Jan K. Voda, M.D. v. Cordis Corporation
Decided February 1, 2007  pdf
Judge Gajarsa with Judges Newman and Prost

 U.S. courts can not judge foreign patents because “[t]he Paris Convention …clearly expresses the independence of each country’s sovereign patent systems…for adjudicating those patents.”

During Voda’s patent infringement suit against Cordis at the U.S. District Court for the Western District of Oklahoma, Voda convinced Judge Tim Leonard to assert supplemental subject matter jurisdiction under 28 USC 1367 over Voda’s foreign patent infringement claims against Cordis in foreign countries.  Cordis filed an interlocutory appeal to the Federal Circuit, arguing that the district court has no jurisdiction over Voda’s five foreign patents.

 The Federal Circuit vacated the district court’s order for jurisdiction over the foreign patents as such authority is limited by 28 USC 1367(c).  In particular, “all treaties made…shall be the supreme law of the land” according to Article VI of the Constitution and “[t]he Paris Convention …clearly expresses the independence of each country’s sovereign patent systems.”  Judge Newman provided a lengthy, convoluted dissent.

 A US court sometimes can judge property rights in other countries when such adjudications comport with treaty obligations and the spirit of comity with foreign jurisdictions.  Infringement of foreign patents is not such an instance.

  

MBO Laboratories, Inc. v. Becton Dickinson & Company
Decided January 24, 2007 pdf
Judge Gajarsa with Judges Bryson and Clevenger

 When the patentee "clearly indicated via the specification and the prosecution history that the invention provides, as an essential feature…it is therefore appropriate to construe the claims so as to ensure that they too, require that feature."

 MBO sued Becton at the U.S. District Court for the District of Massachusetts for allegedly infringing claims to a hyperdermic safety syringe that "immediately" covers the needle upon removal from the body. Judge Reginald Lindsay construed "immediately" to mean that the needle instantly becomes safe without any manipulation by the user. The court also read this limitation into claims that lacked the term "immediately." From this narrow interpretation, the court granted summary judgment of no-infringement and MBO appealed to the Federal Circuit.

The Federal Circuit noted that MBO "clearly indicated" as "an essential feature, immediate needle safety" and affirmed non-infringement of most claims. However, other claims had been broadened by reissue via removing the term "immediate" and had been construed too narrowly to preserve validity. The Federal Circuit explained that "the maxim that claims are to be construed to preserve validity …should be used as a last resort, not a first principle."

Once again, claim construction dominates litigation. Comments made in the specification and during prosecution narrowed claims and may have caused a headache during litigation.

  

Anderson Corporation v. Fiber Composites, LLC
Decided January 26, 2007 pdf
Judge Bryson with Judges Prost and Saris

"[C]haracterizations directed to the invention as a whole (in the specification) may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess."

Anderson sued Fiber at the U.S. District Court for the District of Minnesota for allegedly infringing claims to "composite composition" for deck railings and claims to materials made from compositions. Judge Joan Ericksen construed "composite composition" narrowly because of process steps "that the specification identifies as critical" to the composites and found no infringement for those narrow claims. The court found infringement of the broader material claims. Both sides appealed various issues.

The Federal Circuit affirmed the non-infringement holding, noting that limitations are read into claims particularly where "the prosecution history….definitely resolves the question with a clear disavowal and confirms" a narrow interpretation of broadly written claims. Following this principle, the Federal Circuit construed the claims to materials more narrowly than the district court did, and reversed summary judgment of non-infringement.

The patentee’s characterization of the gist of the invention in this case may have been fatal to the later litigation, which was dominated by claim construction.

  

Hydril Company LP et al. v. Grant Prideco LP et al.
Decided January 25, 2007 pdf
Judge Friedman with Judges Mayer and Bryson

 "[A] valid Walker Process claim (antitrust claim based on fraud) may be based on enforcement activity directed against the plaintiff’s customers."

 Hydril sued Grant at the U.S. District Court for the Southern District of Texas for allegedly monopolizing the oil drilling pipe market by enforcing a patent that had been obtained fraudulently. Grant had notified pipe distributors that certain pipe orders may violate Grant’s patent. Judge Nancy Atlas determined that Hydril lacked reasonable apprehension that Grant would sue Hydril for infringement and dismissed the case. Hydril appealed to the Federal Circuit.

The Federal Circuit reversed, because "[t]hreats of patent litigation against customers, based on a fraudulently procured patent, with a reasonable likelihood that such threats will cause the customers to cease dealing with their supplier, is the kind of economic coercion that the antitrust laws are intended to prevent."

Whether a patentee’s action rises to the level of "reasonable apprehension" of immediate litigation often dominates declaratory judgment actions. A "warning" letter is carefully crafted to take this into account.

  

Israel Bioengineering Project v. Amgen Inc. et al.
Decided January 29, 2007 pdf
Judge Saris (sitting by designation) with Judges Bryson and Prost

 "[A]ll co-owners must ordinarily consent to join as plaintiffs in an infringement suit."

 Three scientists at the Weizmann institute in Israel discovered "TBP" protein, which combats arthritis. The patent rights were subject to 4 complicated license agreements among a few organizations. Later, assignee IBEP, sued alleged infringer Amgen at the U.S. District Court for the Central District of California, but without another assignee (Yeda) Judge Gary Klausner granted summary judgment that IBEP lacked standing because co-owners of the patent were not joined. IBEP appealed to the Federal Circuit.

The Federal Circuit reviewed the complicated contracts under Israeli law, decided that IBEP had at most a pro-rated undivided interest in the patent, and affirmed.

One problem in the complicated licensing from this case was that an investor obtained ownership to a "future invention" for an inventor (not all of the rights), which only included one claim of the future patent.

 

 

Web page Complements of Marvin Motsenbocker Ph.D.  J.D. 
"Out of confusion grows knowledge......"

           

The case summaries and other information here represent the contemporary, 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.