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Federal Circuit Case Law |
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.
Energizer Holdings, Inc. et al. v. International Trade Commission et al.
Decided January 25, 2006 pdf
Judge Newman with Judges Archer and Schall
“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.
Lizardtech, Inc. and Regents of the U. of Cal. v. Earth
Resource Mapping, Inc. et al.
Decided October 4, 2005 pdf
copy
Judge Bryson with Judges Lourie and Schall
* "[A] patentee cannot always satisfy the requirements of section 112, (for a broad claim) merely by clearly describing one embodiment of the thing claimed."
Lizard sued Earth for allegedly infringing a software method for creating a "discrete wavelet transform" used in digital image compression, at the U.S. District Court for the Western District of Washington. Judge John Coughenour, after a first remand from the Federal Circuit that clarified claim meaning, granted Earth summary judgment of no infringement and invalidity. Lizard appealed.
The Federal Circuit affirmed. One issue was that the broadest method claims asserted against Lizard failed written description. The specification "failed to meet either requirement" of written description or enablement because only a narrow embodiment was given and a skilled reader would not possess "any and all means for achieving" the broad claim.
Broad claims sometimes are flimsy, and may be easiest to attack on prior art, written description and enablement grounds. Creative patent drafting of alternative embodiments sometimes can go a long way to alleviate the latter two insufficiencies.
Pandrol USA, LP et al.
v. Airboss Railway Products, Inc. et al.
Decided September 19, 2005
pdf copy
Judge Rader with Judges Clevenger and Dyk
* “The written description requirement does not require the applicant to describe exactly the subject matter claimed."
Pandrol sued Airboss at the U.S. District Court for the Western District of Missouri for allegedly infringing claims to a railroad track fastener having “a layer of adhering material” between a plate and a concrete rail road tie. Judge Scott Wright granted summary judgment of no invalidity, and held that the written description requirement was met for this broad interpretation despite the limited description of only two materials in the specification. Airboss appealed.
The Federal Circuit partly relied on a broad statement in the patent abstract in its expansive interpretation of “adhering material.” Drafting of the abstract is a great opportunity to impart broad meanings to claim terms
Ron Nystrom v. Trex Company, Inc
and Trex Company, LLC
Decided September 14, 2005
pdf copy
Judge Linn with Judges Mayer and Gajarsa
* "[P]atent drawings …may not be relied on to show particular sizes if the specification is completely silent on the issue."
Ron sued Trex at the U.S. District Court for the Eastern District of Virginia for allegedly infringing claims to decking boards made with proportioned curved tops that shed water. Judge Jerome Friedman granted summary judgement of invalidity and non-infringement over a prior art patent that has drawings, which could be used as information to model Ron's claimed invention. Ron appealed to the Federal Circuit.
The Federal Circuit reversed the invalidity holding based on the prior art patent drawings because "the speculative modeling premised on unstated assumptions in prior art patent drawings cannot be the basis for challenging the validity of claims reciting specific dimensions not disclosed directly in such prior art." In particular, the Federal Circuit noted that "absent any written description in the specification of quantitative values, arguments based on measurement of a drawing are of little value."
Patent prior art is very extensive, includes both drawings and writings, and usually is searched during patent disputes. The defendant in this case found related drawings in a prior art patent, and modeled new drawings for an anticipation defense. In rejecting this approach, the Federal Circuit acknowledged the "explicit or implicit notice to the public" function of patents. However, citing the recent Philips case, the court cautioned that patent interpretation is through the looking glass of an average skilled artisan, and might not include conclusions from a high priced expert study obtained during litigation.
In Re. David Wallach et al.
Decided August 11, 2004
pdf copy
Judge Lourie with Judges Mayer and Gajarsa
* "[D]isclosure of a partial structure without additional characterization of the product may not be sufficient to evidence possession of the claimed invention."
The PTO Board of Patent Appeals and Interferences affirmed the rejection of Wallach's claims to DNA that encodes a 190 amino acid protein because Wallach's patent application only described a 10 amino acid long portion of the protein sequence. Wallach argued that the PTO already found that the written description requirement was met for his divisional application having an identical specification, which claimed protein encoded by the recited DNA, and appealed to the Federal Circuit.
The Federal Circuit affirmed the PTO's decision. The court noted that the patent specification described additional features of the protein, which allows identification of claimed protein in the corresponding patent application despite the description of only 5% of the protein sequence. Unfortunately, the specification provided no functional description of the corresponding DNA structure.
This case explores how "functional characteristics when
coupled with a known or disclosed correlation between function and structure"
may be relied on to claim a molecule with a partially known structure. Discovers
of partially sequenced genes often seek both protein claims and DNA claims,
based on incomplete structural details. A practitioner should include functional
information for both types of chemicals to obtain claims when their structures
are incompletely known.
University of Rochester v. G.D. Searle & Co., Inc et al.
Decided February 13, 2004 pdf
copy
Judge Lourie with Judges Bryson and Dyk
* A patent fails written description if it claims a function of a substance but does not allow an artisan to identify a substance capable of carrying out that function.
Rochester sued Searle at the U.S. District Court for the Western District of New York, for allegedly infringing claims to methods that selectively inhibit a chemical reaction in the body that causes inflammation. The Rochester inventors derived a theory for how multiple reactions cause inflammation, and how to discover compounds that should act as superior analgesics, by targeting one reaction. Rochester did not discover any compounds, but only the theoretical, functional properties expected for such compounds. Judge David Larimer held summary judgment of invalidity for lack of written description and lack of enablement because the claimed invention could not be practiced or understood from reading the patent specification. Rochester appealed to the Court of Appeals for the Federal Circuit ("CAFC").
The CAFC affirmed, because "the inventor cannot lay claim to subject matter unless he can provide a description of the compound sufficient to distinguish infringing compounds from non-infringing compounds, or infringing methods from non-infringing methods." The court noted that "Rochester did not present any evidence that the ordinary skilled artisan would be able to identify any compound based on its vague functional description as a 'non-steroidal compound that selectively inhibits activity of the PGHS-2 gene product."
This decision is favorable to companies that employ research tools invented by others, who have nice theories for drug discovery, but no drugs. The University of California and University of Texas, as amici curiae with Rochester argued that the court's decision "will have a significant impact on the continuing viability of technology transfer programs at universities." However, the CAFC explained that universities do not enjoy a "less stringent application of the patent laws to universities than to other entities."
Enzo Biochem, Inc., v. Gen-Probe Incorporated, et al.
Decided July 15, 2002
text copy
Judge Lourie with Judges Dyk and Prost
*
A biological deposit can satisfy the written description requirement
* Written
description is met for a DNA or other molecule of unknown structure if a
characteristic function is provided along with a correlation between the
function and a known structure
The United States District Court for the Southern District of New York granted Gen-Probe summary judgment that Enron's patent claims are invalid for lack of written description. The Federal Circuit affirmed that decision in a previous appeal. However the same three judge panel subsequently granted a petition for rehearing and generated this second decision. In this decision, the panel changed its mind and adopted "the PTO's applicable standard for determining compliance with the written description requirement." In reversing its first decision the court and affirmed that a biological deposit may be used to meet the written description requirement for a DNA having an unknown sequence.
Biotechnology has developed to the point where an unknown biomolecule such as a DNA of unknown sequence, can nevertheless be described very specifically by chemical function coupled to other known structures. This case provides a two step outline for obtaining broad claims to biomolecules of unknown sequence or structure, which can be used to avoid the restrictive effects seen in the U.C. Lilly case. A first step is to "set forth any common features possessed by members of the (claimed DNA) genus that distinguished them from others." For unknown DNAs, this might be hybridization properties to known sequences. A second step is to "describe a sufficient number of species within the very broad genus to indicate that the inventors had made a generic invention, i.e. that they had possession of the breadth of the species, as opposed to merely one or two species." Enzo provided three sequences, and the district court on remand will have to determine whether those sequences support a broad genus claim.
This is a refreshing case that brings the Federal Circuit more in harmony with PTO rules that acknowledge how molecular biologists sometimes characterize and use DNAs of unknown sequence. A patent writer for an invention to biomolecules of unknown structure should insert into the specification as many common functional features of the molecules and as many examples of the molecules as possible to support broad claims. Furthermore, biological deposits should be used to establish written description for additional species if lack of time or money prevents determining their structures before filing.
Abbott Laboratories v. Torpharm, Inc., Apotex, Inc., and
Apotex Corp.
Decided August 13, 2002
pdf copy
Judge Clevenger with Judges Plager and Bryson
* An inherent feature of an invention that is not described in a specification, such as numerical features nevertheless can be claimed
Abbott sued TorPharm at the U.S. District Court for the Northern District of Illinois after TorPharm filed an Abbreviated New Drug Application with the FDA for a generic version of Abbott's patented drug Depakote. Judge Charles Norgle Sr. granted summary judgment of infringement to Abbott, based on TorPharm's proposed package insert literature description and on Abbott's test data. Torpharm appealed to the Federal Circuit.
Abbott's patent claims recite an oligomer having "about 4 to 6 acid/salt subunits." This numerical claim element was not in Abbott's filed application but was added after Abbott submitted test data to the PTO showing that the "original disclosure of divalproex sodium inherently disclosed the numerical limitations." Abbott could not conclusively prove that Torpharm's product existed as the claimed oligomers, however, so the Federal Circuit vacated this part of the summary judgment to allow fact finding on this issue.
This case is particularly interesting because the Federal Circuit accepted claims having numerical values that were added to a specification after filing. The written description requirement was met and the numerical limitation ("about 4-6") was not rejected as new matter by the courts. Test data submitted during prosecution often is used to support enablement. This case shows that such data also can support introduction of new numerical limits into claims after filing, although the PTO often may resist such attempts. This use of inherency can help a patent applicant who may not understand the numerical quality of an invention at the time of filing but may be able to claim a numerical feature during prosecution.