Since the June 9 posting, the Federal Circuit issued four (4) PRECEDENTIAL and five (5) NONPRECEDENTIAL decisions (excluding Rule 36 affirmances), the issues from all of which have been incorporated (in red) into THE OUTLINE. 

 

          The new entries (in red) to THE OUTLINE include the following issues and law:

 

The obviousness of business method claims was affirmed in In re Baggett, 6/16/09 (nonprecedential), where the BPAI’s findings regarding the prior art were supported by substantial evidence and the BPAI’s opinion contained “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” as required by KSR (and the Federal Circuit’s pre-KSR decision in In re Kahn, 3/22/06). [See TO:857-858]  Similarly, the court in In re Mettke, 6/25/09 (nonprecedential) affirmed the BPAI’s decision as supported by substantial evidence where the BPAI provided reasons for a motivation to combine prior art references, and the court thus rejecting the argument that improper hindsight was applied. [See TO:874-878]  In addition, evidence of commercial success failed to rebut a prima facie case of obviousness of the disputed reissue claim, even though the required nexus between the claimed invention and the evidence of success was presumed where the commercially successful device was the claimed invention itself. [See TO:906-908]  Other objective evidence, which also failed to rebut the prima facie case, was the citation of the appellant’s original patent (93 times) as prior art in later patents, and the argument that the original patent thus was a “technology leader.”  Notably, the court expressed no opinion “about the significance of citations” as objective evidence or whether the number of patent citations is a “metric of patent quality and thus of innovation.” [See TO:901-902, 910-911] 

 

Claim construction was addressed in Ecolab, 6/9/09, including the significance of considering the context of the prosecution history as a whole when invoking the doctrine of prosecution history disclaimer, and the meaning of the transitional phrase “consisting essentially of” ([See TO:357]).  Specifically, the patentee during prosecution made disclaiming statements with regard to the scope of the recited composition, followed by the examiner in response clarifying that the patentee erred regarding the claim scope in light of the claim’s transitional phrase “consisting essentially of” and its meaning, which was then followed by the patentee never again repeating or relying on the allegedly disclaiming statements and instead offering alternative reasons to overcome the cited prior art.  The result -- no prosecution disclaimer. [See TO:450-460]  Also addressed was the “well-settled” rule that courts generally may not redraft claims, but must construe them as written.  The court distinguished Chef America, 2/20/04, on the basis that the disputed claim language in that case (which nonsensically recited heating dough “to” 400-850 degrees -- which would burn the dough to a crisp, when the patentee meant to recite heating the dough “at” 400-850 degrees) was unambiguous, whereas in the present case the disputed term “sanitize,” as expressly defined in the specification (i.e., the patentee was its own “lexicographer” [See TO:503-507]), was ambiguous. [See TO:432-435] 

 

Substantial reliance was placed on the prosecution history in Cartner, 6/17/09 (nonprecedential), in construing the term “constantly operative.”  Contrary to the district court’s conclusion that the specification was not instructive and that the prosecution history was “not explanatory” as to the term’s meaning (and the district court therefore relying (improperly) on dictionary definitions of the words “constantly” and “operative” to construe the disputed term [See TO:480-483]), the court ruled that statements the patentee made during prosecution when adding the term to overcome a prior art rejection were “highly explanatory” about the proper construction of the term. [See TO:383-386]

 

A claim which relied only on a single means-plus-function limitation to distinguish the claim from the prior art was found to be anticipated in In re Guess, 6/9/09 (nonprecedential), based on the rule that a means-plus-function limitation encompasses the “corresponding structure(s)” in the specification that perform the recited function.  In the present case, a prior art reference disclosed one of the corresponding structures, which was more broadly described in the specification than the inventive structure.  The court ruled that “for anticipation purposes, a prior art reference that discloses any of the structures encompassed by the means-plus-function clause anticipates that claim.  A disclosure of a species anticipates a claim to a genus.” [See TO:510-516]

 

          Dismissal with prejudice was too harsh of a sanction for lack of standing for failing to timely join a patent co-owner as a plaintiff, the court ruled in U. of Pittsburgh, 6/9/09. [See TO:57-58, 70-72, 165-166, 186-188, 1128-1133]  The district court’s dismissal with prejudice also was improper in Garber, 6/26/09, where the parties had filed a joint stipulation for (voluntary) dismissal without prejudice under FRCP 41(a)(1) (without a court order), which thereby divested the district court of jurisdiction and rendered the court’s dismissal orders void.  Applying Seventh Circuit law, the court reversed the district court’s denial of the plaintiff’s motion for relief from judgment under FRCP 60(b) ([See TO:1203-1207]) -- thus vacating the district court’s orders -- after rejecting the defendants’ argument that an attached proposed order and discretionary language used in the joint stipulation converted the stipulation into a (voluntary) dismissal under FRCP 41(a)(2) (requiring a court order). [See TO:1128-1133]  However, dismissal with prejudice under FRCP 41(b) for failure to prosecute was affirmed in McZeal, 6/18/09 (nonprecedential), applying the Fifth Circuit’s factors for affirming dismissals with prejudice for failure to prosecute, based in part on the plaintiff’s failure to produce a pre-discovery claim chart, as ordered by the district court. [See TO:1128-1133]  In addition, the district court, on remand from an earlier appeal in the case, “explicitly disregard[ed]” the Federal Circuit’s mandate (by improperly dismissing the case for failure to state a claim under Rule 12(b)(6), after the Federal Circuit had expressly ruled that the complaint met the notice pleading requirements for the defendants to answer [See TO:1120-1122]), which “[t]he district court lacked the power to ignore . . .” [See TO:203-205]

 

          Finally, the court in Ortho-McNeil, 6/10/09, addressed apportioning an award of costs (under FRCP 54(d) and 28 USC § 1920) between multiple losing parties for joint deposition discovery, while avoiding a double recovery by the plaintiff.  Here, the joint discovery was conducted by two defendants in separate cases pending in different district courts, and the plaintiff had effectively recovered half the amount of its costs through settlement with one of the defendants. [See TO:725-727]

THE OUTLINE keeps getting better – and its “Power” keeps getting stronger!

 

Since the May 11 posting, the Federal Circuit issued fifteen (15) PRECEDENTIAL and seven (7) NONPRECEDENTIAL decisions (excluding Rule 36 affirmations), the issues from all of which have been incorporated into THE OUTLINE (in red). 

 

          The new entries (in red) to THE OUTLINE include the following issues and law:

 

          The biggest issue decided -- finally -- is the court’s adoption of the Atlantic Thermoplastics (Fed. Cir. 1992) rule for interpreting product-by-process claims for determining infringement, in Abbott Labs, 5/18/09 (en banc). [See TO:604-606, including a summary of the dissenting opinions; See also ANTICIPATION -- “Product-by-process claims” at TO:828-830]

 

          Defenses to doctrine of equivalents infringement were also at issue in Abbott Labs (disclaimer after excluding disclosure from an application that was present in a priority foreign application) and Depuy Spine, 6/1/09 (the “ensnarement defense” under which there is no infringement when the asserted equivalent “ensnares” the prior art). [See TO:629-630]  The reverse doctrine of equivalents also reared its head again in Depuy Spine. [See TO:637-638]

 

          Willful infringement after Seagate (en banc), namely the scope of the “objective recklessness” standard, was also addressed in Depuy Spine. [See TO:659-661]

 

          Lost profits damages were awarded, and the factors necessary under the Panduit test to prove them also were addressed extensively, in Depuy Spine. [See TO:684-690] Shockingly, as much as an additional $32 million in reasonable royalty damages were potentially lost after the court held the district court did not abuse its discretion in denying the patentee’s motion for a new trial, after the patentee failed to follow the First Circuit’s “iron-clad rule” to timely object to the jury’s inconsistent verdict (awarding a 0% royalty rate after being instructed to choose a rate between 6% and 15%) before the jury was dismissed. [See TO:692] The court noted that “[t]he jury may well have been confused by the wording used in the special verdict form,” where the form said nothing about answering the questions regarding the royalty rate (with respect to infringement for which the patentee was not entitled to recover lost profits, which infringement was not specified) in the event the jury awarded lost profits, which it did.  A special verdict form (under FRCP 49) is useful to detect an inconsistent verdict, as the Federal Circuit discussed in L&W, 12/14/06 -- and which case THE OUTLINE summarizes under the heading “Jury verdict – FRCP 49” as follows: “Use of the Rule 49 procedure to elicit specific factual findings from the jury should alert lawyers to the possibility that the jury’s responses might be inconsistent – FRCP 49(a) (special verdicts) and 49(b) (general verdict with answers to interrogatories) (L&W, 12/14/06)” [See TO:1179] 

 

          Obviousness based on structural similarity between the claimed drug compound and prior art compound(s) was at issue in Altana Pharma, 5/14/09, and Procter & Gamble, 5/13/09. [See TO:902-913 for the current law and issues regarding structural obviousness of chemical compounds] Each case presented particularly notable issues.  First, in Altana Pharma, the court held that the district court in the context of deciding a preliminary injunction motion properly employed a “flexible approach” (consistent with KSR (S.C.)) in permitting the defendant to rely on more than one “lead compound” in the prior art, stating that “to the extent Altana suggests that the prior art must point to only a single lead compound for further development efforts, that restrictive review of the lead compound test would present a rigid test similar to the teaching-suggestion-motivation test that the Supreme Court explicitly rejected in KSR.”  THE OUTLINE reveals that this same issue, i.e., whether the accused infringer can rely on more than one lead compound in the prior art as the starting point for the obviousness analysis, was previously addressed in Eisai, 7/21/08, wherein the court noted that the district court did not rigidly limit the obviousness arguments by forcing the selection of a single lead compound. [See TO:909-912]  Next, in Procter & Gamble, the court (holding that the claimed drug compound was not obvious) provided some insights into selecting and using expert witnesses to prove one’s case.  As one example, the district court had found that the patentee’s expert was evasive (presumably during cross-exam) on the topic of whether the claimed compound would have been made in view of the prior art as part of routine testing.  The Federal Circuit ruled, however, that “evidence of evasion is not necessarily evidence that the testimony would otherwise have been favorable” to the questioner’s case. [See TO:1165-1167]  As another example, the only direct expert evidence from the accused infringer (having the burden of proof on obviousness) was presented by an expert witness that the district court discredited, because the witness “had no specialized experience in the area of bisphosphonates” aside from his preparation to testify in the litigation, and that the expert’s opinion also was “marred by hindsight” from relying on a current version of drug profiles instead of drug profiles at the time of invention. [See TO:1161-1162]

 

          The validity of a design patent was challenged on obviousness grounds in Titan Tire, 6/3/09. [See TO:1315-1326]

 

          Also notable in Titan Tire, the court clarified the requirements for showing a “substantial question” of invalidity for the purpose of surviving a preliminary injunction motion. [See TO:719-727, 731-732]  In addition, the issue of a preliminary injunction against the sale of the generic equivalent of the patented drug product was addressed in Altana Pharma. [See TO:727-730]

         

          Inequitable conduct (and the “absolute plague” that charging it in almost every major patent case has become) was addressed in Dickson Indus., 5/20/09 (nonprecedential). [See TO:997-1004, 1031-1034]

 

          The requirement for the plaintiff to have constitutional standing to assert a federal (patent-related) claim (here, the correction of inventorship under Section 256 [See TO:986-987]), and in turn for the district court to have subject matter jurisdiction over the claim, was reinforced in Larson, 6/5/09. [See TO:24-34, 51-57]

 

          A district court’s personal jurisdiction over a foreign declaratory judgment defendant-patentee was at issue in Autogenomics, 5/18/09. [See TO:106-120]

 

          Petitions for a writ of mandamus in response to the denial of a  motion to transfer venue under 28 USC § 1404(a) in the E.D. of Texas were once again decided in In re Genentech, 5/22/09 (granting petition) and In re Volkswagen of America, 5/22/09 (denying petition). [See TO:120, 217-221, 1119-1122]

 

          A breach of a patent license was at issue in Corebrace, 5/22/09, in which the court held that the right to have a product made by a third party is inherent in the granted right to make, use, and sell the patented product. [See TO:1313-1315]

 

          Settlement agreements, with a covenant against future challenges to patent validity, were at issue in Epistar, 5/22/09, and specifically whether the accused infringer was contractually estopped from challenging validity in a later infringement suit after merging with another company subject to the covenant. [See TO:1096-1102, 1310-1313]

 

          The scope of a Section 146 action (which is brought in federal district court by the losing party in an interference before the BPAI) was clarified in Agilent Technologies, 6/4/09. [See TO:1289-1290] Also decided was that claims copied into an application from the opposing patent for the purpose of provoking an interference are construed based on the specification of the patent (from which the claim was copied), not the specification of the host application (in which the claim was copied), before determining whether the application provides adequate written description support for the copied claim. [See TO:1292]

 

          The breach of a confidentiality agreement was at issue in Fitness Quest, 5/12/09 (nonprecedential). [See TO:1253-1255]

 

          Various claim construction issues -- based on the principles reaffirmed in Phillips (en banc) -- were addressed in several cases. [See TO:342 for a listing of these and the other post-Phillips cases]  The issue of disclaimer in the specification was addressed, when only a single embodiment is disclosed (Linear Tech., 5/21/09) [See TO:542-545], and from criticizing the prior art (Epistar and Paragon Solutions, 5/22/09) [See TO:433-439].  The court also continued its practice of construing claim terms in view of the specification more narrowly than the claim language might imply (Abbott Labs and Erbe, 5/19/09; and in nonprecedential cases -- Amgen, 6/1/09; Purechoice, 6/1/09; and Boss Indus., 5/28/09), while in Norgren, 5/26/09 (nonprecedential), the court held that the ITC limited a claim too much based on the specification. [See TO:382-391, 402-410, 523-530]  Purechoice was particularly noteworthy as it seemed to raise the issue of whether a patentee can obtain a broader claim scope (here, for the term “air quality”) than the specification permits, based on statements (here, just one statement) made during prosecution supporting the broader scope.  However, the court rejected the argument, “unconvinced that the scant appearance” in the prosecution history of the patentee’s argument supporting the broader scope “in the hundreds of pages of specification and prosecution history would inform a person of ordinary skill that air quality extends beyond contaminants and pollutants, when weighed against references to [these] attributes found throughout the specification and prosecution history.”  Sullivan’s Analysis has questioned before whether a patentee can obtain a broader claim scope based on broadening statements made during prosecution, when the broader scope is not supported by the specification. [See TO:372-376 for the cases relating to this issue]

 

And, last but certainly not least, the court in Boss Indus., 5/28/09 (nonprecedential), called the defendant on “possible discovery abuses that may have occurred in the district court” as part of the defendant’s discovery practices which “were less than commendable.”  The court stated based on the record that “[f]or example, on several occasions Yamaha date-stamped documents to be filed with the district court using the court’s time stamp, but did not actually place the document in the court’s drop-box at that time.  Rather, Yamaha actually filed the documents, by placing them in the drop-box, several days after the ‘filed’ stamp was placed on the documents.”  What?  The district court had admonished Yamaha for this “deceitful conduct” after realizing “that this was not an isolated incident, but happened several times.”  What?  But then the district court apparently denied the plaintiff’s sanctions motion relating to the defendant’s conduct.  What?  And then, the plaintiff did not appeal the denial of the sanctions motion – and thus the Federal Circuit was unable to rule on these “possible discovery abuses.”  What?  Wow!  The court concluded: “This type of conduct during litigation is unacceptable and reflects a lack of respect for both the opposing party and the court.”  At least one thing is clear from the case.  The Federal Circuit is prepared to call anyone on possible misconduct before the district court revealed by the record, even if the misconduct is not formally on appeal.  The court’s discussion is now incorporated into THE OUTLINE. [See TO:180-182, 1072-1074]

          THE OUTLINE cites and summarizes the issues and law in all of the Federal Circuit’s precedential IP law decisions issued to date since August 2003, as well as all of the court’s nonprecedential decisions (other than Rule 36 affirmations) issued since January 2008. (See “Disclaimer”)  Also, during the past year, the court’s decisions were further summarized in the Analysis, with citations to THE OUTLINE to allow readers to see how the current cases relate to the court’s earlier cases. 

 

Starting today, the format of Sullivan’s IP Law Outline & Analysis™ will change -- to focus more on the benefits of THE OUTLINE and less on the analysis of the cases.  Of course, summaries of the cases are found on a number of other blogs and sites -- of which everyone is aware and preferably has already read (or the cases themselves) before reading the present Analysis. 

 

The new format is expected to better accomplish the mission set out for Sullivan’s IP Law Outline & Analysis™ (See “Mission Statement”) and enable patent professionals to more efficiently utilize The Power of the Outline™.

 

          Since the April 20, 2009 posting, the Federal Circuit issued seven (7) PRECEDENTIAL and six (6) NONPRECEDENTIAL decisions, all of which have been incorporated into THE OUTLINE (in red). 

 

          The new entries (in red) to THE OUTLINE include the following issues and law:

 

          In PRECEDENTIAL cases, the court addressed: claim construction (applying general Phillips principles, as well as construing claims in the context of the accused device) [See TO:346-347, 370-378, 401-404], literal infringement (when a claim recites “capable of” or similar language) [See TO:591-594], Section 271(e)(1) “safe harbor” exception to infringement (as applied in ITC proceedings) [See TO:547-550, 1258], damages (reasonable royalty) [See TO:647-649, 664-665], obviousness (when substituting one prior art material for another in a device, reasonable expectation of success (e.g., the invention is the work of a skilled mechanic, not an inventor), and commercial success) [See TO:798-799, 810-822, 832-834, 854-861], written description (that each claim need not address all of the prior art problems addressed in the specification) [See TO:911-914, 926-927], enablement (does not require disclosure of a commercial embodiment) [See TO:905], obviousness-type double patenting (applying the one-way vs. two-way test) [See TO:947-957], reissues (recapture rule, including reliance on the specification) [See TO:1230-1237], patent misuse (relating to patent pools) [See TO:1024-1028], the ITC’s jurisdiction (over “imminent importations”) [See TO:1255-1258], and trademarks (the doctrine of foreign equivalents, and primarily geographically deceptively misdescriptive marks) [See TO:1175-1176, 1183-1184, 1198-1200].

 

          In NONPRECEDENTIAL cases, the court addressed: claim construction (when method claims require sequential ordering of steps) [See TO:483-484], design patent infringement (applying the new law of Egyptian Goddess (en banc)) [See TO:1269-1278], contract interpretation (under Florida and Michigan law) [See TO:261-263], post-trial motions (under FRCP 60(a) and (b)) [See TO:1145-1148], the Federal Circuit’s jurisdiction (based on the final judgment rule) [See TO:37-44], and waiver on appeal (including by a party’s counsel) [See TO:164-171].  

 

          Several issues raised in the current cases deserve specific mention, as follows:

 

          The court’s decision in Princo Corp. v. ITC, 4/20/09 (J. Dyk, J. Gajarsa, J. Bryson, dissenting in part) related to patent misuse by unlawful tying of patents in package licenses, i.e., patent pools. [See TO:1024-1028 for the current, updated issues and law relating to the patent misuse defense to infringement]  The court based its decision on two issues of interest, claim construction and enablement.  First, claim construction was relevant to whether the disputed Lagadec patent (claim 6) was “essential” (as a blocking patent) or “non-essential” to practice the “Orange Book standard.”  The court concluded, without actually construing claim 6, that the patent was essential because a license to the patent could be viewed as “reasonably necessary” because “legitimate questions could have existed as to the scope of” claim 6 at the time of package licensing.  Specifically, this was because Phillips (en banc) (which “clarify[ied] the proper role of the specification in construing claim language”) “had not yet been decided,” and thus “the law of claim construction was unsettled in the late 1990s,” i.e., at the time the package licenses were executed.  The court’s reasoning seems to suggest, at least, that claim construction today is settled; but that, of course, is subject to debate.  In any event, THE OUTLINE is an excellent resource to examine the Phillips decision, review the various principles of claim construction re-affirmed in Phillips, and uncover all of the court’s precedential cases applying Phillips. [See TO:325-526, including a listing of all the post-Phillips claim construction cases, also identifying the members of each panel, at TO:332-336]  

 

          Enablement arose in the context of a second charge of patent misuse, based on an alleged agreement between the patent holders not to license a competing technology in the Lagadec patent.  Specifically, the court rejected the argument that the Lagadec technology must already have been developed to the point of commercial viability before misuse could be found, relying in part on the rule that enablement does not require disclosing a commercial embodiment.  In particular, the court ruled that “the fact that a patent’s disclosed embodiments may not be commercially viable cannot be dispositive. Technology disclosed in a patent typically needs to be further developed before a viable commercial embodiment is possible. Indeed, our cases have recognized that one way the patent laws encourage the development of new products is by securing an inventor’s rights during the time between patenting of an immature technology and commercialization.” (citing Rite-Hite (1995) (en banc))  The court also cited its decision in CFMT, 11/12/03 (in which the court noted that “the invention, while enabled by the issued patent, nevertheless required ‘hundreds of modifications’ and months of experimentation by the inventors to achieve a suitable commercial implementation”).  THE OUTLINE cites and summarizes the precedential cases issued since August 2003 relating to this issue (which thus includes the CFMT case, issued in November 2003). [See TO:905]

 

          Another case of interest is Ritchie v. Vast Resources, Inc., 4/24/09 (C.J. Posner, C.J. Michel, J. Bryson), in which Judge Posner of the Seventh Circuit wrote for the court that the claimed sexual device was obvious under KSR (S.C.), in which a standard type of glass, with well-known properties, was substituted for the glass normally used in sexual devices.  Like in other post-KSR obviousness cases, the court cited from the collection of rules of obviousness announced in KSR (many of which rely on the predictability of the claimed invention in light of the prior art) to show the obviousness of the sexual device.  Indeed, here the court cited four different rules, one of which the court concluded “describes our case to a tee.” [See TO:820]  “And if more [was] required to make [the court’s] point,” the court also cited and relied on “substitution cases” in which patentability was denied for obviousness where known materials were substituted for other known materials in the claimed invention.  But, the court here passed up the opportunity to cite even a fifth rule of obviousness from KSR, relating to substitutions, which is that a simple substitution of one known element for another is obvious.  So many possible rules, any one or more of which can probably at least be argued to apply to most, if not all, inventions -- even those held to be nonobvious.  THE OUTLINE includes all of the KSR rules, and cites and summarizes the cases in which the Federal Circuit has applied these rules. [See TO:810-829, 832-839]  

 

          Written description was at issue in Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 4/29/09 (C.J. Michel, J. Bryson, C.J. Posner) (eyeglass frames), with the court ruling that when the specification addresses multiple problems in the prior art, all of those problems need not be addressed by each claim for there to be adequate written description support.  (This rule is very similar to a rule of claim construction, that unclaimed features and advantages of the disclosed invention cannot limit claims; specifically, that an invention may possess a number of advantages or purposes, and there is no requirement that every claim directed to that invention be limited to encompass all of them.  THE OUTLINE cites and summarizes the cases relating to these rules. [See TO:516-517, 911-914, 926-927])  Two prior decisions of the court were cited in support of there being adequate written description (Resonate (2003) and Honeywell (2002)), both of which the challenger tried to distinguish as being claim construction cases, rather than written description cases.  The court, however, saw “no meaningful distinction” between the two issues (since both serve related functions in determining whether a claim is commensurate with the scope of the specification), and therefore held that the principle from Resonate and Honeywell applies to written description, as well as claim construction, analysis.  What the court did next was something it does rarely; the court cited as additional support a nonprecedential decision (Cordis, from 2006) to show that the court (in Cordis) has, in fact, applied the two cases in the written description context.  The take-away lesson from this, as readers were already advised in the November 10, 2008 posting – Don’t forget about the nonprecedential decisions!

 

          Finally, In re Fallaux, 5/6/09 (J. Moore, J. Schall, J. Archer) involved obviousness-type double patenting, in which two (Vogel) patents were used as references to reject the application claims.  The Vogel patents named a different inventive entity than and shared only a common inventor with the application, rather than sharing an identical inventive entity or a common assignee.  (THE OUTLINE cites and summarizes the current cases and law relating to double patenting. [See TO:947-957])  In footnote 1, the court noted that the MPEP allows such a rejection, quoting the rule (§ 804).  The applicant never challenged the rule (“Neither party raised or argued the question . . . .”), but maybe should have, as the court suggested at the end of the footnote, stating: “This opinion should not be read to decide or endorse the PTO’s view on this issue.”  The message, if viewed narrowly, is that the court did not necessarily agree with this part of Section 804; but if read broadly, the message may be that if the Federal Circuit (or the CCPA) has not “decide[d] or endorse[d] the PTO’s view” on an issue in the MPEP (assuming that was the case here), then the party against whom the rule is applied may want to raise or argue the rule’s validity.

Since the March 12 posting, the Federal Circuit issued eighteen (18) PRECEDENTIAL and six (6) NONPRECEDENTIAL decisions, all of which have been incorporated into THE OUTLINE (in red), as follows.

 

In PRECEDENTIAL decisions, the court in Synthes (USA) v. G.M. Dos Reis, 4/17/09 (J. Schall, J. Friedman, J. Bryson) applied, for the first time by the Federal Circuit, FRCP 4(k)(2) (the so-called federal long-arm statute) to determine whether the district court had personal jurisdiction over a foreign defendant to decide the plaintiff’s claim for patent infringement.  Rule 4(k)(2) allows a court to exercise personal jurisdiction over a defendant if (1) the plaintiff’s claim arises under federal law, (2) the defendant is not subject to jurisdiction in any state’s courts of general jurisdiction, and (3) the exercise of jurisdiction comports with due process.  Thus, Rule 4(k)(2) allows the district court to exercise personal jurisdiction over a foreign defendant whose contacts with the United States, but not with the forum state (here, California), satisfy due process.  The third requirement, the due process analysis, contemplates a defendant’s (“minimum”) contacts with the United States as a whole, as opposed to the state in which the district court sits (as in the typical personal jurisdiction analysis).  The court’s analysis focused on the due process requirement, as the first two requirements were met.  The court reversed the district court, holding that the district court had specific jurisdiction over the defendant based on the Federal Circuit’s three-factor test for specific jurisdiction (in which the additional five-factor test of Burger King (S.C.) is applied to decide the third factor above, i.e., whether assertion of personal jurisdiction over the defendant is reasonable and fair).  An interesting issue for which the court “express[ed] no view” was whether traveling from Brazil with the accused products for display at a trade show in the United States constituted an infringing act of importation under Section 271(a).  THE OUTLINE cites and summarizes the current cases and law relating to personal jurisdiction. [See TO:104-116] 

 

The patentee’s response to a rejection, and not the examiner’s ultimate allowance of a claim, is what gives rise to prosecution history estoppel, the court ruled in Felix v. American Honda Motor, 4/10/09 (J. Linn, J. Rader, J. Friedman).  The court also, once again, applied the rule that the presumption of surrender attaches when the patentee cancels an independent claim and rewrites one of its dependent claims in independent form for reasons related to patentability, while also holding this to be so even if the amendment alone does not succeed in placing the claim in condition for allowance.  (Here, the patentee attempted to secure broader claim protection by amending a first dependent claim (which contained the disputed “gasket” limitation) as above -- which the examiner did not allow -- as an intermediate step to amending a second (allowable) dependent claim by incorporating both the independent claim and the first dependent claim.)  THE OUTLINE cites and summarizes the current cases and law relating to prosecution history estoppel as a bar to asserting the doctrine of equivalents. [See TO:607-625]

 

OTHER ISSUES ADDRESSED were: claim construction, including the improper use of dictionaries for construing a claim term (“mounted”) more broadly than the meaning provided by the claims and specification [See TO:456-465], and, when briefing the Federal Circuit appeal, the court reminded “counsel of the importance of providing full, accurate, and undistorted quotations and citations in briefing before this court.” [See TO:133-136, 174-176]

 

In Takeda v. Doll, 4/10/09 (J. Rader, J. Moore, J. Schall, dissenting), the court addressed obviousness-type double patenting in the context of a product patent and a patent to the process of making the product.  The MPEP rule is that a product and the process of making the product are “patentably distinct” (and thus not subject to double patenting) if the product as claimed can be made by another materially different process.  In this case, the court ruled that later-developed alternative processes (i.e., developed after the invention date of the product and its primary process of making) are relevant to determining double patent, but only if the alternative processes existed before the filing date of the secondary application that triggered the double patenting analysis (here, the patent to the process of making the product).  (The double patenting issue here was significant because the process patent issued from a pre-GATT application filed more than fourteen years after the filing of the product patent.)  Judge Schall, dissenting, argued that the invention date was the relevant date for the product-process double patent inquiry.  THE OUTLINE cites and summarizes the current cases and law relating to double patenting. [See TO:938-946]

 

The court in Transcore v. ETC, 4/8/09 (J. Gajarsa, J. Dyk, J. Moore) applied the rule of patent exhaustion, as recently addressed by the Supreme Court in Quanta Computer v. LG Electronics, that “the initial authorized sale of a patented item terminates all patent rights to that item.”  The court agreed with the district court that the patentee’s infringement claims against the defendant were barred by patent exhaustion, because sales of the patented product to the defendant from the defendant’s supplier were authorized by a covenant not to sue in a settlement agreement between the patentee and the supplier.  THE OUTLINE cites and summarizes the current cases and law relating to the patent exhaustion doctrine (also known as the “first sale” doctrine). [See TO:555-563]

 

In In re Kubin, 4/3/09 (J. Rader, J. Friedman, J. Linn), the court affirmed the BPAI, holding that a claimed DNA molecule corresponding to a gene was obvious as “obvious to try” under KSR (S.C.) when the prior art disclosed or provided: 1) the protein encoded by the gene, 2) detailed techniques for cloning the particular gene, as well as other well-known techniques for cloning and sequencing genes generally, 3) the necessary motivation to isolate the gene (here, based on the protein’s important role in the human immune response), and 4) a “reasonable expectation of success” for isolating and sequencing the gene.  THE OUTLINE cites and summarizes the current cases and law relating to obviousness, including when something that’s “obvious to try” is also obvious under KSR (S.C.). [See TO:791-792, 802-803, 825-831] 

 

Also notable in the case, and specific to the court’s biotech-related case law, the court also addressed the effect on the case of In re Deuel (Fed. Cir. 1995) (in which the court reversed the BPAI’s conclusion that a prior art reference teaching a method of gene cloning, together with a reference disclosing a partial amino acid sequence of a protein, rendered DNA molecules encoding the protein obvious).  The court in Deuel proclaimed that “obvious to try” is an inappropriate test for obviousness.  This ruling, of course, was overturned by KSR (S.C.), as the court in Kubin confirmed: “Insofar as Deuel implies that the obviousness inquiry cannot consider that the combination of the claim’s constituent elements was ‘obvious to try,’ the Supreme Court in KSR unambiguously discredited that holding.”  Indeed, the Kubin court noted that KSR cited Deuel “as the source of the discredited ‘obvious to try’ doctrine.” [See TO:857]

 

OTHER OBVIOUSNESS ISSUES ADDRESSED were: teaching away [See TO:834-836], and that claiming a newly discovered property of a known or obvious composition does not render the composition patentable (also an anticipation issue) [See TO:869; See also ANTICIPATION, at TO:762-764]

 

In Ariad Pharmaceuticals v. Eli Lilly, 4/3/09 (J. Moore, J. Prost, J. Linn, concurring), the court held genus claims -- to methods for regulating expression of genes by reducing the activity a transcription factor, NF-ĸB --   invalid under Section 112, first paragraph, as not supported by an adequate written description.  Specifically, the genus method claims were supported in the specification by three classes of molecules which the inventors hypothesized as being potentially capable of reducing NF-ĸB activity.  With respect to the first class (“specific inhibitors”), the court ruled that “a vague functional description and invitation for further research does not constitute written disclosure of a specific inhibitor.”  Similarly, for the second class (“dominantly interfering molecules”), the court held that the description of the molecules represented merely “a wish, or arguably a plan” for future research. (citing Fiers)  Finally, with respect to the third class (“decoy molecules”), the specification did describe actual example molecules, but the court concluded that the only disclosure of their use in the invention -- i.e., that NF-ĸB “would bind the decoy” and thereby “negative regulation can be effected” -- was “not so much an ‘example’ as it is a mere mention of a desired outcome.”  Also for the third class, the court cited Lizardtech, 10/4/05, in ruling further that any support provided by the decoy molecules could not “bear the weight of the vast scope” of the generic method claims.  THE OUTLINE cites and summarizes the current cases and law relating to the written description requirement, both generally [See TO:902-925] and specifically to pharma/biotech-related inventions [See TO:908-917].

 

ANOTHER WRITTEN DESCRIPTION ISSUE ADDRESSED was that publications relating to the invention after the priority filing date, and the fact that skilled workers actually practiced the inventors’ teaching soon after the filing date, are not sufficient to support written description, as the written description analysis occurs “as of the filing date sought.” (citing Vas-Cath) [See TO:903-905]   

 

ANOTHER ISSUE ADDRESSED was inequitable conduct, the court focusing on the requirement of a threshold finding of intent to deceive by clear and convincing evidence, regardless of the level of materiality. [See TO:946-950, 978-993]

 

The court in Euclid Chemical v. Vector Corrosion Technologies, 4/1/09 (J. Linn, J. Lourie, J. Newman, dissenting) concluded that a patent assignment agreement was ambiguous as to whether it transferred a certain patent, and thus remanded the case to determine the parties’ intent.  Judge Newman, dissenting, opined that the agreement was unambiguous in not transferring the disputed patent, stating: “It is a truism of patent practice that transfers of patent property require specificity as to the property transferred . . . The practice requiring specificity of identification of transferred patents is so entrenched, that it would smack of misfeasance to have omitted the known ‘742 patent from the list of assigned properties, if the parties had intended that it be assigned.”  THE OUTLINE cites and summarizes the current cases and law relating to construction of patent assignments. [See TO:1244-1249]

 

Cordis v. Boston Scientific, 3/31/09 (J. Dyk, J. Mayer, D.J. Huff) was particularly instructive because of the number of denials by the district court of motions for judgment as a matter of law (JMOL) that the court considered, and affirmed, ruling that the jurys’ verdicts (here, there were two separate jury verdicts) on issues of infringement, anticipation, and obviousness were supported by substantial evidence, mainly by expert testimony. [See TO:285-289, 1122-1130, for the current cases and law relating to denial of motions for JMOL]  One notable substantive issue the court addressed was anticipation based an alleged prior art “printed publication” under Section 102(b).  Relying on Klopfenstein, 8/18/04, the court affirmed the district court’s grant of the patentee’s summary judgment motion, holding that the inventor’s “monographs,” which were papers describing his work on stents distributed well before the priority date, were not publicly accessible when distributed only to a limited number of entities (including two commercial entities).  The court reasoned that the monographs, although distributed without any legal obligation of confidentiality, were nonetheless distributed with a “reasonable expectation” that that the information would remain confidential.  The same rule is also applied in the context of the “public use” bar of Section 102(b), the court noted.  THE OUTLINE cites and summarizes the current cases and law relating to anticipation generally [See TO:744-791], and the above issue specifically [See TO:764-772].

 

ANOTHER ANTICIPATION ISSUE ADDRESSED was that functional language can be a claim limitation for avoiding anticipation. [See TO:473]

 

OTHER ISSUES ADDRESSED were: 1) claim construction, including prosecution disclaimer [See TO:424-440] and the rule that inventor testimony is irrelevant to claim construction, as well as to infringement [See TO:469-471, 1113]; 2) infringement, including infringement based on the doctrine of equivalents [See TO:588-606] and an application of the (Litecubes, 4/28/08) rule that “within the United States” in Section 271(a) is an element of the claim, rather than a threshold jurisdictional requirement [See TO:525-528]; 3) obviousness, by the prior art teaching away [See TO:834-836], 4) indefiniteness [See TO:871-890], 5) written description in the context of whether the patent was entitled for priority purposes to the earlier filing date of a provisional application [See TO:710-712], and 6) waiver of claim construction arguments when first presented to the district court after trial ends [See TO:147-150].

 

In a trademark case, the court in Aycock Engineering v. Airflite, 3/30/09 (D.J. O’Grady, J. Linn, J. Newman, dissenting) affirmed the TTAB’s cancellation of a service mark registration, holding that the “use in commerce” requirement for registration is not met when an applicant uses a service mark (e.g., by advertising or publicizing the service) in preparing to perform the service in commerce, but never actually offers the service to the public.  Rather, the court also ruled, the mark must be actually used in connection with the services described in the application for the mark.  Judge Newman, dissenting, argued that the description of services, although imperfectly written, included within its scope the actual preparatory services performed by the applicant prior to registration.  THE OUTLINE cites and summarizes the current cases and law relating to trademarks. [See TO:1157-1188]

 

The standard for enablement of a prior art reference for purposes of anticipation under Section 102 differs from the enablement standard under Section 112.  In particular, a prior art reference need not demonstrate utility in order to serve as an anticipating reference under Section 102.  Then why has the Federal Circuit in some cases framed the issue of enablement under Section 102 as a question of whether one of ordinary skill in the art would know how to “make and use” the invention based on the prior art reference’s disclosure?  The court in In re Gleave, 3/26/09 (J. Prost, C.J. Michel, J. Moore) explained the reason.  The confusion stems from the fact the when a method claim is at issue, it is meaningless to require that the prior art reference disclose how to make the method in order to anticipate; rather, for enablement the reference must show that a person of ordinary skill would know how to use – in other words, to practice or to carry out – the claimed method in light of the reference.  But this does not mean that the reference must demonstrate the invention’s utility (for instance, for a claimed method for treating a disease, a prior art reference need not disclose proof of efficacy to anticipate the claim).  THE OUTLINE cites and summarizes the current cases and law relating to this issue, and related issues. [See TO:754-759] 

 

          OTHER ANTICIPATION ISSUES ADDRESSED related to: 1) a prior art reference’s disclosure of (long) lists of compounds which anticipate each of the listed compounds separately, and 2) how a disclosed (long) list of compounds is often distinguished from a disclosed genus of compounds -- which is not necessarily a disclosure of every species that is a member of that genus, unless the class of compounds within the genus is limited and can be “at once envisaged” by the person of ordinary skill. [See TO:744-752]

 

          The court in Clock Spring v. Wrapmaster, 3/25/09 (J. Dyk, J. Bryson, D.J. Patel) clarified that there is no experimental use negation to an otherwise invalidating prior public use (or prior commercial sale) under Section 102(b) unless the testing of the claimed features of the invention, or testing to determine whether an invention will work for its intended purpose, is conducted for the purpose of filing a patent application.  The court explained that the experimental use negation of the Section 102(b) bar only exists to allow an inventor to perfect his discovery through testing without losing his right to obtain a patent for his invention.  THE OUTLINE cites and summarizes the current cases and law relating to the experimental use negation of a Section 102(b)-barring prior public use or prior commercial sale more than one year before the application filing date. [See TO:772-774, 781-783]

 

          OTHER ISSUES ADDRESSED were false advertising under the Lanham Act, applying Fifth Circuit law [See TO:1193], and waiver [See TO:159-161].

 

          The court in Clearvalue v. Pearl River Polymers, 3/24/09 (J. Schall, J. Dyk, J. Newman, dissenting) saved the appellants and their attorney from having to pay almost $3 million in attorney fees after the court reversed the district court’s striking of the appellants’ pleadings and entering judgment in the appellees’ favor as a sanction under FRCP 37 for a discovery violation under FRCP 26.   As a result, the court concluded that the appellees were no longer a “prevailing party” as required for fee and costs awards under Section 285 and 28 USC § 1920, once the court reinstated all of the appellants’ original claims.  The court, however, did affirm an attorney fees award of about $121,000 under Rules 26 and 37, but not as to the appellants’ attorney, after ruling that the district court failed to consider the attorney’s ability to pay the fee award.  Judge Newman dissented “from the panel’s exoneration of the attorney from the monetary consequences of admittedly improper actions” based on an inability to pay.  THE OUTLINE cites and summarizes the current cases and law relating to the above issues [See TO:1070-1073], as well as awarding sanctions for litigation misconduct based on the district court’s “inherent power” [See TO:1019-1020], and the discovery rule that all materials and information disclosed to a testifying expert in connection with his testimony are not privileged and thus are discoverable by the opposing party. [See TO:1070-1071]  

 

          Not only did the court award attorney fees as sanctions for a frivolous appeal under FRAP 38 in E-Pass Technologies v. 3Com, 3/20/09 (J. Linn, J. Prost, J. Bryson, dissenting), but it also held E-Pass’s counsel jointly and severally liable for the sanctions because of the “frivolous nature of the advocacy” in support of the appeal, stating that “we consider the attorney who wrote and signed the briefs to be equally responsible.”  In dissent, Judge Bryson concluded that although the record was misrepresented, E-Pass’s “shortfall is not so egregious as to call for the imposition of sanctions.”  THE OUTLINE cites and summarizes the current cases and law relating to awarding sanctions for a frivolous appeal under Rule 38. [See TO:207-208; See also TO:174-176]

 

          The court’s eagerly-awaited decision regarding the PTO’s final rules limiting the number of continuations and RCEs, and the number of claims, issued in Tafas v. Doll, 3/20/09 (J. Prost, J. Bryson, concurring, J. Rader, dissenting in part).  Contrary to the district court’s decision, the court held that the rules were “procedural,” rather than “substantive,” and thus within the scope of the PTO’s rulemaking authority in Section 2(b)(2).  The court therefore gave Chevron deference to the rules, holding them to be valid except for Rule 78 (limiting the number of continuations), which conflicted with Section 120 and thus was invalid.  Notably, the court did not address several issues, including whether the rules are impermissibly retroactive, to be addressed on remand.  Judge Bryson concurred, arguing that the “question remains open” whether a rule limiting the number of serial continuations would be valid under Section 120.  Judge Rader, dissenting in part, argued that the rules were substantive (as they “drastically change the existing law and alter an inventor’s rights and obligations under the Patent Act”), not procedural, and thus would have affirmed the district court’s conclusion that the PTO exceeded its statutory rulemaking authority in promulgating the rules.  THE OUTLINE cites and summarizes the current cases and law relating to the Federal Circuit’s review of agency (PTO) regulations. [See TO:127-132]

 

          If not already clear from Dayco Products (Fed. Cir. 2003) and Eisai, 7/21/08, it should be clear now after the court’s decision in Larson Mfg. v. Aluminart Prods., 3/18/09 (J. Schall, J. Clevenger, J. Linn, concurring): be sure to cite to the PTO, as part of the duty of disclosure, not only the fact of co-pending related application(s), but also any -- and all  -- Office Actions issued in the co-pending application(s) which contain another examiner’s adverse decisions about substantially similar claims.  Office Action claim rejections made in a co-pending application may be material to patentability and thus withholding them from the PTO with deceptive intent may be inequitable conduct, as “knowledge of a potentially different interpretation is clearly information that an examiner could consider important when examining an application.” Dayco Products.  Also notable, in a concurring opinion, Judge Linn called for en banc review of the deceptive intent prong of inequitable conduct, explaining why he disapproves of the current test for inferring deceptive intent.  THE OUTLINE cites and summarizes the current cases and law relating to inequitable conduct, and materiality and deceptive intent, specifically. [See TO:946-1002 (961-972, 978-993)]      

 

          At the end of the decision in Henkel v. Procter & Gamble, 3/18/09 (J. Linn, J. Prost, J. Moore), the court raised an issue, in passing, of whether a monthly testing report prepared contemporaneously with an alleged prior actual reduction to practice (RTP) sufficiently corroborated the inventor’s testimony regarding his contemporaneous appreciation of an embodiment that met all of the limitations of the interference count.  THE OUTLINE cites and summarizes the current cases and law relating to corroboration of conception and RTP of an invention, including a prior decision in the case, Henkel, 5/11/07.  Corroborating evidence to prove an actual RTP based on an inventor’s testimony must be: objective and independent, of a sufficient amount, and communicated to the inventor.  Also, corroboration of RTP is more stringent than corroboration of conception, Medichem, 2/3/06. [See TO:929-933, 1225-1226, 1230-1237] 

 

OTHER ISSUES ADDRESSED were the substantial evidence standard of review for BPAI decisions [See TO:219-222], and harmless error [See TO:172-173].

 

The court in Crown Packaging Technology v. Rexam Beverage Can, 3/17/09 (J. Moore, J. Bryson, J. Gajarsa) was bound by its earlier ruling in Hanson (Fed. Cir. 1983) in holding that the patent marking requirement (for recovering patent damages) of Section 287(a) did not apply where the patentee only asserted the method claims of a patent that contained both method and apparatus claims.  THE OUTLINE cites and summarizes the current cases and law relating to the marking and notice requirements of Section 287(a). [See TO:647-649]

 

In ANOTHER ISSUE ADDRESSED, the court reversed the district court’s grant of summary judgment of noninfringement based on the doctrine of equivalents, ruling that the patentee, in opposing the summary judgment motion, properly relied on its expert report containing a detailed analysis under the function-way-result test as being sufficient to create a material issue of fact regarding the disputed claim element’s function. [See TO:581-583, 1090-1095]

 

          One thing clear from the court’s decision in ICU Medical v. Alaris Medical Systems, 3/13/09 (J. Moore, C.J. Michel, J. Prost) is that a patentee should not rely on the doctrine of claim differentiation -- which under Federal Circuit law is a guide, not a rigid rule, of claim construction -- to support a broad construction of an independent claim when the claim just as easily could be interpreted narrowly based on a narrow disclosure in the specification as requiring additional features recited in a dependent claim.  Here, ICU Medical relied on the doctrine of claim differentiation in suing on the “spike” claims, in response to which the court construed the term “spike” in the independent claim, based on the narrow disclosure in the specification, as also requiring the additional features of the “spike” recited in a dependent claim (i.e., wherein the spike is pointed so that it can pierce the seal).  (A relevant fact in the case was that the dependent claim was not filed in the original application, but was added later during prosecution.  Might the result have been different if both the independent and dependent claims were filed together in the original application?)  THE OUTLINE cites and summarizes the current cases and law relating to the doctrine of claim differentiation, including its exceptions [See TO:446-453], as well as other rules of claim construction addressed in the case [See TO:321-521 (351-353, 367-375, 379-381, 386-393)].  

 

Notably, despite the above claim differentiation argument, the court affirmed the district court’s decision that asserting the “spike” claims against the accused product was objectively baseless and bad faith litigation, and thus also affirmed the district court’s award of attorney fees based on an “exceptional case” under Section 285 [See TO:666-682], as well as the district court’s award of Rule 11 sanctions [See TO:1016-1018].        

 

ANOTHER ISSUE ADDRESSED was invalidity under Lizardtech, 10/4/05, based on a lack of adequate written description under Section 112, first paragraph, for a generic claim added during prosecution, which was supported in the specification only by a single species of the genus. [See TO:917-921]      

 

          In NONPRECEDENTIAL decisions, the court in In re Telular Corp., 4/3/09 (J. Moore, J. Mayer, J. Schall) (Order) denied a petition for a writ of mandamus relating to the district court’s denial of transfer from the Eastern District of Texas to the Northern District of Illinois, stating that the case was “in stark contrast to the circumstances leading to the grants of mandamus in” the court’s recent decision in TS Tech, 12/29/08, and the Fifth Circuit’s decision in Volkswagen, “in which the facts overwhelmingly supported transfer.”  Here, the court ruled that mandamus was not appropriate as in the above cases “to correct an order that clearly exceeds the bounds of judicial discretion” where “a rational legal argument” existed in support of the district court’s ruling denying the transfer motion. [See TO:210-213, 293-294]

 

          The court in Heeling Sports v. US Furong, 4/3/09 (per curiam – J. Mayer, J. Plager, J. Bryson) vacated and remanded the damages judgment after the district court failed to explain its basis for the reasonable royalty damages award. [See TO:641-643, 657-664]

 

          In In re Cypress Semiconductor, 4/2/09 (J. Dyk, J. Newman, J. Bryson), the court denied a petition for mandamus to halt an ITC investigation after the petitioner failed to show that the ITC “clearly and indisputably” erred in ruling that it may proceed with the investigation, based on its ruling, under Federal Circuit law, that the patentee was not precluded from asserting its patent which was held invalid in a prior district court case, but where the parties had settled the case after judgment and, on motion, the district court vacated the judgment. [See TO:210-213, 1037-1041, 1135-1136]

 

          In Digene v. Third Wave Techs., 4/1/09 (J. Lourie, J. Rader, J. Prost), the court’s claim construction included the ruling that the term “an” (or “a”) following the closed phrase “consisting of” means one and only one, even when the transitional phrase for the entire claim is “comprising.” [See TO:333-334]

 

          In a trademark opposition case, the court in Bishop v. Flournoy, 4/1/09 (per curiam – J. Mayer, J. Dyk, J. Moore) remanded for the TTAB to reconsider the issues of standing, fraud, and likelihood of confusion in light of the applicant’s admissions in the pleadings, despite the opposer’s failure to follow the rules for filing testimony and other evidence in support of the opposition. [See TO:1184-1188]

 

          Finally, the court in In re Bryan, 3/31/09 (per curiam – C.J. Michel, J. Schall, J. Linn) affirmed the BPAI’s conclusion of obviousness, where the only thing that distinguished the claimed board game from the prior art was the printed matter on the board and game cards.  Printed matter cannot impart patentability in the absence of a new and unobvious functional relationship between the printed matter and the claimed structural elements, the court held (citing In re Ngai, 5/13/04). [See TO:788, 869-870]

          The Outline highlights (in red) the PRECEDENTIAL(5) and NONPRECEDENTIAL(11) decisions issued by the Federal Circuit during the past three weeks, as follows.

 

          In PRECEDENTIAL decisions, the court in Mars v. Coin Acceptors, 3/9/09 (J. Linn, J. Clevenger, J. Prost) (Order), applying Third Circuit law, recalled its earlier mandate, which erroneously did not contain instructions concerning an allowance for post-judgment interest, as required by FRAP 37(b), after the court had modified the district court’s judgment awarding damages.  The responsibility and authority for determining whether a party to an appeal is entitled to post-judgment interest is assigned to the appellate tribunal. [See TO:189-191, 664]

 

The court in In re Ferguson, 3/6/09 (J. Gajarsa, J. Mayer, J. Newman, concurring) ruled that claims to a “method of marketing a product” and a “paradigm for marketing software” did not cover patent-eligible subject matter under Section 101.  With regard to the method claims, the court ruled that they did not meet either prong of the machine-or-transformation test set forth in In re Bilski (en banc), 10/30/08 -- as the claims 1) were not tied to a machine or apparatus (with the court rejecting the argument that the recited “shared marketing force” was a machine, as defined in In re Nuijten, 9/20/07) and 2) did not transform any article into a different state or thing (but rather were directed to organizing business or legal relationships in the structuring of a sales force or marketing company, which under Bilski does not meet the transformation prong of the test because they are not physical objects or substances, and they are not representative of physical objects or substances).  With regard to the paradigm claims, the court ruled that they did not fit into any of the four categories of statutory subject matter in Section 101, as defined in In re Nuijten, 9/20/07, i.e., processes, machines, manufactures, or compositions of matter.  The court concluded instead that the claims covered a patent-ineligible abstract idea – i.e., a business model for an intangible marketing company.  Judge Newman, concurring, argued that the claimed marketing paradigm was not an abstract idea, but rather was definite and concrete and limited. [See TO:708-724 for the current law regarding PATENTABLE SUBJECT MATTER]

         

          In Monolithic Power Systems v. O2 Micro, 3/5/09 (J. Rader, J. Plager, J. Gajarsa), the court ruled that the jury’s underlying findings of fact regarding the teaching of a prior art patent which were implicit in the jury’s verdict of obviousness (of claims to circuitry for laptop computers) were supported by substantial evidence, which included unrebutted expert testimony as well as independent expert testimony under FRE 706(a).  On obviousness, the court rejected the patentee’s argument that the experts articulated no reasons for combining the prior art, as the experts had sufficiently explained that skilled circuit designers would “routinely mix and match” the claim elements, all of which the patentee conceded were well known in the prior art.  The court thus answered in the negative KSR (S.C.)’s inquiry whether the claimed improvement was “more than the predictable use of prior-art elements according to their established functions.” [See TO:768, 783-785, 789, 842-843]  As mentioned above, the case also addressed the use of an independent expert appointed by the district court under FRE 706(a). [See TO:1073-1074]

 

          In Nartron v. Schukra, 3/5/09 (J. Lourie, J. Dyk, J. Prost), the court reversed the district court’s summary judgment of dismissal which was based on Nartron’s failure to join an alleged co-inventor as a plaintiff. [See TO:54-59]  The court ruled that the alleged co-inventor provided only an insignificant contribution to the invention (of a dependent claim in which the contribution was the sole feature added in the dependent claim), and thus was not a co-inventor.  In short, the invention primarily focused on in the specification and claims related to a control module for providing massage capability to existing automobile seats, and the alleged co-inventor, who had no involvement with the conception or R&D underlying the control module, merely suggested to the named inventors to use the invention with a seat feature (an extender) known in the prior art.  The court applied several different inventorship rules, including the rule that one who merely suggests an idea of a result to be accomplished, rather than the means of accomplishing it, is not a joint inventor. [See TO:902-906]  Here, the alleged co-inventor simply posed to the named inventors the result he wanted for the automobile seat massager, and left it to the named inventors to figure out how to accomplish it.

 

Finally, in Eli Lilly v. Teva, 2/24/09 (J. Rader, C.J. Michel, J. Prost, dissenting), the court held that the district court did not abuse its discretion in extending the statutory thirty-month stay of FDA approval under the Hatch-Waxman Act of Teva’s generic form of Evista^® (for postmenopausal osteoporosis), based on the district court’s findings of Teva’s lack of cooperation in expediting the litigation, including that Teva had altered its drug product only eight months prior to trial.  In her dissent, Judge Prost argued that, to the contrary, the district court never made any findings related to the statutory standard for extending the stay under 21 USC § 355(j)(5)(iii), which required Teva to have “failed to reasonably cooperate in expediting the action.” [See TO:287, 294-295] [Lilly this week was granted a TRO to further halt the launch of Teva’s generic product pending the outcome of trial.] 

 

          In NONPRECEDENTIAL decisions, the court in In re Natures Remedies, 3/12/09 (per curiam – C.J. Michel, J. Mayer, J. Dyk) held that the BPAI correctly determined that a reference disclosing the claimed invention was publically available in Copenhagen more than a year before the priority date and was therefore an anticipating “printed publication” under Section 102(b).  The court ruled that the BPAI’s conclusion as to public accessibility was also supported by the fact that the there was nothing in the reference evidencing an intent to keep its contents confidential. [See TO:743-746]  

 

          The majority in Chapman v. Casner, 3/11/09 (J. Prost, J. Lourie, J. Rader, dissenting) probably would have agreed with Judge Rader that the claimed method for making a more pure form of the drug oxycodone was patentable based on the inventor’s unexpected discovery of the source of an impurity problem, and the solution for solving it -- but for the court’s construction of the method claims, as written, as being genus claims rendered obvious by prior art species. [See TO:730-733, 802-803, 830-831, 833] 

 

The court in Cardiac Pacemakers v. St. Jude Medical, 3/6/09 (per curiam) granted a petition for rehearing en banc to decide the question: Does Section 271(f) apply to method claims, as well as product claims?  (The court also vacated its earlier nonprecedential decision, issued 12/18/08, in which the court had affirmed the district court’s decision permitting overseas damages under Section 271(f) due to infringement of a method claim.  The court also ruled in the earlier decision that Microsoft v. AT&T (S.C.) did not overturn Federal Circuit precedent holding that Section 271(f) applies to method claims, which includes Union Carbide, 10/3/05.  Although several members of the court (Judges Lourie, Michel and Linn) disapproved of the panel’s holding in Union Carbide, the panel in Cardiac Pacemakers, 12/18/08, stated that “[a]s a panel, we cannot reverse the holding of another panel of this court.”) [See TO:534-537]

 

          O2 Micro v. Taiwan Sumida Electronics, 3/5/09 (J. Rader, J. Plager, J. Gajarsa) is a companion case to Monolithic Power Systems, 3/5/09, above, in which the court held that the same patent claims at issue in this case were invalid as obvious.  The court’s invalidity judgment thus collaterally estopped O2 Micro (under Blonder-Tongue Labs (S.C.)) from pursuing infringement claims against Taiwan Sumida on the same patent claims. [See TO:1000-1001]

 

In Applied Medical Resources v. U.S. Surgical, 2/24/09 (J. Prost, J. Mayer, J. Gajarsa), the court ruled that the district court did not err by allowing the accused infringer to argue to the jury that the “deformable outer valve portions” (of the disclosed embodiment of a device used for inserting instruments into a patient during laparoscopic surgery) were relevant to the “way” the disclosed embodiment performed the claimed functions for determining equivalency and literal infringement of a means-plus-function claim under Section 112, sixth paragraph.  The district court acted appropriately even though it did not identify the valve portions during claim construction as being part of the structure corresponding to the claimed functions.  (The court’s ruling was consistent with Judge Dyk’s dissent in an earlier appeal in the case, see Applied Medical Resources, 5/15/06, in which he opined that the analysis of the “way” the claimed function is performed necessarily requires descriptive language not contained in the claim itself.) [See TO:469-480, 558-562]

 

In Pivonka v. Axelrod, 2/19/09 (J. Prost, C.J. Michel, J. Schall), the court reminded us, first, of the need for expert testimony to rebut the other party’s expert testimony of obviousness [See TO:789, 842-843], and second, that arguments and objections raised on appeal which were not made first to the BPAI are waived [See TO:159-160].  The obviousness (of a collapsible pet carrier) was based in part on the KSR (S.C.) rule that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” [See TO:784-785]

 

The court (J. Prost, J. Gajarsa, J. Linn) also issued several Orders on 2/6/09. 

 

First, in In re Enzo Biochem, 2/6/09 (Order), on a petition for a writ of mandamus, the court directed the district court to decide in the first instance whether Enzo’s stipulation not to sue (i.e., covenant not to sue) Applera on the ‘955 patent mooted Applera’s invalidity counterclaim relating to the patent, for the purpose of ruling on the counterclaim before entering final judgment. [See TO:34-35, 37-43, 203-206] 

 

Similarly, the appeal was dismissed as premature in Koninklijke Philips v. Cardiac Science, 2/6/09 (Order) because the district court did not expressly dismiss a pending counterclaim prior to entering judgment, which therefore was not a final judgment, as required for appeal. [See TO:37-43] 

 

Permission to appeal an interlocutory order certified by the district court under 28 USC § 1292(c)(1) was granted in Shire v. Sandoz, 2/6/09 (Order) to hear the issue of whether a patentee who settles an earlier infringement case after a Markman ruling issues is precluded by the doctrine of collateral estoppel from relitigating claim construction issues determined in the prior case. [See TO:47-49, 146, 1002-1003] 

 

The district court’s order staying proceedings pending reexamination was ruled not appealable in Avocent Redmond v. Rose Electronics, 2/6/09 (Order), in which Avocent failed to show that the stay effectively put it out of court with respect to patent issues. [See TO:1031-1032]  

 

Finally, in Therasense v. Becton Dickinson, 2/2/09 (Order), Judge Prost denied Abbott’s request to extend the word count for its reply brief, despite there being multiple appellees, where Abbott did not show that the extension was warranted. [See TO:129-132]

          The Outline highlights (in red) the PRECEDENTIAL(6) and NONPRECEDENTIAL(3) decisions issued by the Federal Circuit during the past three weeks, as follows:

 

          In PRECEDENTIAL decisions, the court in Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 2/13/09 (J. Newman, J. Schall, J. Moore) ruled that the patentee’s covenant not to sue for past infringement (and where the defendant had stopped selling the allegedly infringing eyeglasses after the suit was filed, but was prepared to sell the product again) did not divest the district court of jurisdiction over declaratory counterclaims applicable to future infringement, under “all the circumstances” of Medimmune (S.C.), where the covenant not to sue did not extend to future production and sale of the same product that was the subject of the infringement suit. [See TO:34-35, 69-80, 89-92, 96]  

         

          In Line Rothman v. Target Corp., 2/13/09 (J. Rader, J. Friedman, J. Bryson), the court affirmed a jury verdict of obviousness of the claimed tank top with a built-in nursing bra -- which was produced by combining an existing tank top with an existing nursing bra.  According to the court, the invention fell into a “very predictable field” (i.e., nursing garment design) and that “[i]n the predictable arts, a trial record may more readily show a motivation to combine known elements to yield a predictable result, thus rendering a claimed invention obvious.” KSR (S.C.) (Here, expert testimony showed that each of the claim elements was in the prior art and functioned as expected in the claimed invention.) [See TO:758-759, 769-777, 801-803]  A motivation to combine also was evidenced by testimony regarding the market demand for apparel like the claimed invention, as a result of the transition in the late 1990s of pregnant and nursing mothers from sedentary lifestyles to pregnant women exercising when they were nursing (also citing KSR(S.C.) and that the obviousness analysis “need not seek out precise teachings . . . for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). [See TO:772-773, 776-777] Additionally, considerable evidence of secondary considerations (industry willingness to license, commercial success, customer and industry praise, and copying) failed to overcome the strong prima facie showing of obviousness. [See TO:810-813, 818-819]

 

          However, the court reversed the jury’s verdict of inequitable conduct (note that inequitable conduct is an equitable defense to patent infringement most appropriately reserved for the court, but here the parties agreed to submit inequitable conduct to the jury). [See TO:229-231]  Notably, the court ruled with respect to deceptive intent that “vague descriptions of unsubstantiated prior art” from a potential licensee “does not create an automatic duty of disclosure” because “[o]therwise, every potential patent licensee (and prospective infringer) could subject a patent applicant to the possibility of inequitable conduct sanctions on a whim.” [See TO:903-905]  The court also distinguished misrepresentations of material fact from legitimate attorney argument during prosecution (citing Young, 6/27/07). [See TO:915-917]

 

          In Baden Sports, Inc. v. Molten USA, Inc., 2/13/08 (J. Lourie, J. Rader, J. Linn), the court reversed a jury award of $8 million for false advertising under Section 43(a) of the Lanham Act, holding (under Dastar (S.C.)) that the defendant’s advertisements which falsely claimed authorship of an idea (here, in using the word “innovative” to advertise the defendant’s infringing “dual-cushion technology” basketballs, where the plaintiff in fact invented the technology) were not actionable under Section 43(a)(1)(A).  Nor was the plaintiff’s false authorship claim actionable under Section 43(a)(1)(B), which prohibits false advertising that “misrepresents the nature, characteristics, qualities, or geographic origin” of goods,” the court also ruled.  (The subsection (B) claim was based on dicta in Dastar (S.C.) that a false authorship claim -- although not actionable under subsection (A) -- might be brought under subsection (B)).  Specifically, the court concluded, bound by Ninth Circuit law, that false authorship was not an actionable claim under subsection (B). [See TO:1137-1138]  Interestingly, the court added (in footnote 1) that the case may have had a different result under First Circuit law, citing a case stating that the dicta in Dastar (S.C.) “left open the possibility that some false authorship claims” could be brought under subsection (B).  Other issues included waiver, both of: 1) arguments not made on appeal, and 2) arguments not made first at trial. [See TO:128-131, 157-158]

 

In Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., 2/9/09 (J. Lourie, J. Clevenger, J. Linn), the court reversed the district court’s decision of nonobviousness, ruling that the court “erred as a matter of law in failing to find claims 1 and 5 of the ‘969 patent to have been obvious” (which claimed a “candle tin” comprising a candle and a candle holder with a removable cover that, once removed, also acted as the base for the candle holder so that the hot candle would not scorch the underlying surface, e.g., a table; additionally, on the bottom of the candle holder were protrusions, or feet, for seating the candle holder on the cover). [See TO:758-759]

 

          The lesson from the case (reading between the lines) is that when asserting or ruling that an invention is obvious, the analysis of motivation to combine “should be made explicit” under KSR (S.C.); that is, the challenger or court must explain the reasons why (as the Federal Circuit did on pages 10-13 of the opinion) there would have been a motivation to combine prior art to arrive at the claimed invention. [See TO:774, 788-789]  This is required even though, also under KSR, the motivation to combine need not be express or explicit in the prior art. [See TO:770-771]  In this case, regarding obviousness, the court concluded, citing KSR, that “there clearly was” a motivation to combine the prior art (one reference teaching the feature of the top of a candle holder also acting as the base, and another reference teaching the claimed protrusions -- in both cases for solving the scorching problem) to arrive at the claimed candle, which was a predictable variation, grounded in common sense and “obvious to try” based on the finite number of options available in the prior art for solving the scorching problem. [See TO:776-777, 782-783, 792-794] 

 

The court also addressed infringement -- contrary to the court’s normal practice of not addressing infringement when the patent is held to be invalid [See TO:191-192]; specifically, the court found the accused candle not to infringe the claims even though the candle was “reasonably capable” of infringement. [See TO:565-566 for a discussion of the cases relating to this issue]

 

In Kinetic Concepts, Inc. v. Blue Sky Medical Group, Inc., 2/2/09 (J. Prost, J. Bryson, J. Dyk, dissenting) the court affirmed the jury’s verdict of nonobviousness, based on findings that none of the asserted prior art taught or suggested the claimed “treating a wound with negative pressure” limitation.  Significantly, the jury was not instructed as to the meaning of “wound,” which meaning was central to obviousness -- as evidenced by the split decision, with the majority adopting the narrower construction of “wound” based on the context of the intrinsic record “after reading the entire patent” including that all of the examples involved skin wounds, and Judge Dyk arguing for the term’s broader meaning, also based on the specification along with the term’s definition from a medical dictionary (which broader construction, according to Judge Dyk, rendered the claimed invention obvious). [See TO:370]  The claim construction issue here was whether using a medical dictionary definition of “wound” was appropriate. [See TO:439-440, 447-448]  The majority ruled not, citing only one case in support, Nystrom v. TREX, 9/14/05 (in which the court ruled that the term “board” meant, based on the context of the intrinsic record, a board cut from a log, rather than its dictionary definition which included synthetic boards).  In the present case, the split in the court’s claim construction in the end was subjective, with the majority believing that the facts in the intrinsic record matched the facts in Nystrom, thus calling for a narrow interpretation, and Judge Dyk obviously believing that the present case was distinguishable from Nystrom.        

 

          Why wasn’t the jury instructed as to the meaning of the disputed term “wound” – as required by the court’s decision in O2 Micro, 4/3/08; that is, that the court, not the jury, must resolve actual disputes regarding the proper scope of patent claims? [See TO:139-142] Why was the jury left with the instruction that “wound” meant “wound,” which thus allowed the parties’ competing experts to construe the term for the jury?  In fact, the district court did construe the disputed term – as meaning “injury”; however, in the middle of the trial, the district court vacated this construction “in light of the fact that the parties had yet to use the word ‘injury’ in front of the jury.” (emphasis added)  

 

          Finally, the court in Süd-Chemie, Inc. v. Multisorb Technologies, Inc., 1/30/09 (J. Bryson, J. Rader, J. Friedman) vacated the district court’s summary judgment of obviousness of a patent claim directed to a desiccant container comprising in part “compatible” polymeric packaging materials.  In particular, the Federal Circuit concluded that even though the same classes of polymeric materials were disclosed as packaging materials in both the patent in suit and prior art patent, these disclosures were different in a way that the patent in suit -- by expressly defining the term “compatible” -- treated as “important to the invention.”  Obviousness issues, as well as prior art issues generally, included: 1) construing claims first before deciding validity [See TO:694-695], 2) admissions of prior art in the specification [See TO:699-700], 3) interpreting prior art references [See TO:696], and 4) secondary considerations, particularly unexpected results [See TO:810-811, 820-821].

 

          In NONPRECEDENTIAL decisions, the court in Contech Stormwater Solutions, Inc. v. Baysaver Technologies, Inc., 2/13/09 (D.J. Huff, C.J. Michel, J. Moore) affirmed the district court’s grant of summary judgment of noninfringement, construing the claim term “outer surrounding wall” of a water filtration basket based on the context of the specification (citing the “board” case of Nystrom v. TREX, 9/14/05) to require a “substantially vertical surface.” [See TO:370-372]  The court rejected the patentee’s broader construction of “wall” based on a dictionary definition.  The court also affirmed the district court’s grant of summary judgment in favor of the patentee on the defendant’s business tort counterclaims based on a threatening letter sent by the patentee to the defendant’s customers. [See TO:1142-1146]

 

          Why the court in Kuhl Wheels, LLC v. General Motors Corp., 2/10/09 (per curiam – C.J. Michel, J. Mayer, J. Dyk) issued a written opinion (as opposed to simply affirming under Rule 36) was unclear, as the opinion did not provide any details for why the court affirmed the district court’s grant of summary judgment of noninfringement and on non-patent issues, including fraud, breach of contract, and unfair business practices.  Perhaps the opinion was written to document how clear the claim construction and summary judgment of noninfringement were: “The intrinsic evidence, including the language of the claims and the specification, as well as the figures of the ‘194 patent, fully supports [the district court’s] construction.  Under the court’s claim construction of ‘spokes,’ there is no factual dispute that Hayes’s Struktur Wheel does not infringe the ‘194 patent, literally or under the doctrine of equivalents.”

 

          Finally, the court in Smith, Inc. v. CHF Indus., 2/6/09 (per curiam – J. Mayer, J. Schall, J. Gajarsa) vacated and remanded the district court’s summary judgment of noninfringement of the design patent in suit which was based on the point of novelty test, which test was eliminated by the full court’s decision in Egyptian Goddess (en banc), 9/22/08. [See TO:1198-1199]

The Outline highlights (in red) both the PRECEDENTIAL (3) and NONPRECEDENTIAL (4) decisions issued by the Federal Circuit during the past three weeks, as follows.

 

In PRECEDENTIAL decisions, the court in Boston Scientific Scimed, Inc. v. Cordis Corp., 1/15/09 (J. Lourie, J. Rader, J. Prost) reversed the jury’s verdict that the claimed drug-eluting, “non-thrombogenic” stent having both a drug-eluting and drug-free coating layer was nonobvious over a prior art patent, while making clear that the ultimate question of obviousness is a question of law for the court: “We are free to override the jury’s legal conclusion on the ultimate question of obviousness without deference.” [See TO:234-237, 752, 756-758]  In particular, the court ruled (citing KSR (S.C.), of course) that one of ordinary skill in the art would have been motivated to combine two separate embodiments described and pictured (side by side) in a single prior art patent to produce the claimed stent: “Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” [See TO:763-769]  Additionally, the court found that the prior art patent also taught the “non-thrombogenic” claim feature, by teaching that “thrombus formation . . . is controlled and minimized by the stent design and the elution” of a thrombolytic drug.  Related to this finding, the court also ruled that the prior art patent’s teaching of multiple embodiments having a certain benefit (here, the prior art patent taught that the disclosed stent embodiments were non-thrombogenic because of their “design” and/or “elution” of the drug) did not render less obvious one of those embodiments (here, the embodiment that, like the claimed stent, was non-thrombogenic due to its design). [See TO:776-777, and TO:714, relating to a similar ANTICIPATION rule, that prior art anticipates even if the relevant disclosure is part of a long list or is not emphasized]  Finally, the court also rejected the patentee’s evidence of weak secondary considerations, including failure of others. [See TO:802-805, 809] 

The court also addressed claim construction, using the claim language, the specification (including the abstract), the prosecution history, and a medical dictionary to interpret the meaning of the disputed terms “non-thrombogenic” and “long term.” [See TO:331, 348-350, 435-443]

 

In In re Comiskey, 1/13/09 (en banc), the court granted rehearing en banc for the limited purpose of authorizing the panel (J. Dyk, C.J. Michel, J. Prost) to revise and withdraw its original opinion, issued 9/20/07. 

In the original opinion, the panel held that business method claims (to a “method for mandatory arbitration resolution”) were unpatentable subject matter under Section 101, while holding that business system claims were patentable under Section 101.  However, the panel in the original opinion remanded the system claims to the PTO for a determination of whether they were obvious under Section 103 -- after concluding that the system claims “at most merely add a modern general purpose computer to an otherwise unpatentable mental process . . . .  The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness” (citing Leapfrog v. Fisher-Price, 5/9/07 [See TO:770]). 

In the revised opinion, the panel maintained that the method claims were unpatentable under Section 101, but withdrew its holding in the original opinion that the system claims were patentable under Section 101, and remanded those claims to the PTO to consider -- rather than their obviousness, as in the original opinion -- the Section 101 question in the first instance.  Thus, also deleted from the revised opinion were the panel’s reasons in the original opinion for remanding the system claims based on obviousness. 

Several of the judges concurred in, or dissented from, the court’s denial of the petition for a full rehearing en banc.  In one concurrence, Judge Lourie opined that the implication of the panel’s statement above (citing Leapfrog for support) was that the “otherwise unpatentable mental process” is prior art, which is incorrect because “[p]rior art is that which is defined in § 102, not that which is patent-ineligible subject matter under § 101.”  (Another interpretation of the panel’s statement is that it does not matter why the method claims were held “unpatentable” when the only addition to the system claims incorporating the unpatentable method is a general purpose computer or other modern electronics; that is, it is irrelevant for obviousness of the system claims whether unpatentability of the method claims was based on Section 101 (as here) or Section 103 (as in Leapfrog)).  Of course, the obviousness issue became moot once the panel’s original judgment was vacated and the opinion withdrawn. [See TO:695-709, relating to patentable subject matter under Section 101, and TO:113-119, relating to the Federal Circuit’s authority to affirm BPAI decisions on alternative grounds]     

 

In Walton v. U.S., 1/8/09 (J. Friedman, J. Schall, J. Bryson), the court ruled that a federal prisoner’s suit against the government for copyright infringement was not authorized by 28 USC §1498(b), where a copyrighted calendar was prepared “while in the . . . service of the United States.”  Accordingly, the court concluded that the case was properly dismissed for lack of jurisdiction, based on Blueport, 7/25/08. [See TO:1074-1075]

 

In NONPRECEDENTIAL decisions, the court in Friskit, Inc. v. Realnetworks, Inc., 1/12/09 (J. Bryson, J. Linn, J. Prost) affirmed the district court’s summary judgment of obviousness of an on-demand, digital music service that combined pre-existing technologies.  The district court initially denied the challenger’s summary judgment motion, but then granted a renewed motion in light of (the intervening decision of) KSR (S.C.).  The patentee’s pre-KSR argument for nonobviousness -- that the patents “deliver[ed] the glue to put existing technologies together into a single application” -- failed to overcome the showing of obviousness because, as noted in KSR, “the ‘predictable use of prior art elements according to their established functions’ is likely to be within the grasp of one of ordinary skill.” [See TO:768]  After KSR, the patentee changed its theory of nonobviousness, alleging instead a “critical limitation” of the claimed invention not in the prior art, which the Federal Circuit also rejected as being a “trivial” and obvious advance over the prior art.  The court also rejected the patentee’s evidence of teaching away [See TO:791-793] and secondary considerations, including commercial success [See TO:806], copying by others [See TO:808-809], and a long-felt need in the art [See TO:810-811].  

 

The court in Tokyo Keiso Co. v. SMC Corp., 1/9/09 (J. Lourie, J. Schall, J. Prost), again relying on KSR (S.C.), held claims (directed to a volume flow meter that measures the flow volume of fluids passing through a pipe) to be obvious based on a (newly cited) single prior art reference combined with admissions of prior art in the specification. [See TO:693-694]  The court declined to address the issue of whether the presumption of validity under Section 282 is weakened, under KSR (S.C.), when the asserted prior art was not cited during prosecution. [See TO:682-686, including a summary of Poweroasis, 4/11/08, in which the court ruled that the presumption of validity is not modified by newly cited art]  Obviousness issues included: a motivation to combine based on “design incentives and other market forces” in the prior art (KSR (S.C.)) [See TO:769-770], unexpected results [See TO:797-800], teaching away [See TO:791-793], and secondary considerations for overcoming a prima facie case of obviousness, including a long-felt need in the prior art [See TO:810-811].

 

In Panavise Prods., Inc. v National Prods., Inc., 1/6/09 (C.J. Michel, J. Prost, J. Moore), the court ruled that the district court correctly dismissed the case for lack of declaratory judgment jurisdiction based on the totality of the circumstances, including that the plaintiff failed to show that the controversy between the parties was based on a “real and immediate” injury or threat of future injury caused by the defendant, as required by Medimmune (S.C.).   The totality of the circumstances also included the defendant’s unrebutted “factual challenge” that, prior to the filing of the complaint: 1) it had never seen or evaluated, or was even aware of, the plaintiff’s product, and 2) that the defendant had no contact with the plaintiff relating to the plaintiff’s product or the patent in suit.  The court thus concluded that the plaintiff’s suggestion that the defendant knew about the plaintiff’s product (because the defendant had allegedly observed the plaintiff’s product at a trade show) was based improperly on “mere speculation.” [See TO:71-73, 82-83]  The court also ruled that the fact that the defendant had routinely enforced its patent rights in prior suits was also insufficient for the court’s jurisdiction when viewed under the totality of the circumstances. [See TO:88]  

Furthermore, the court denied the defendant’s motion for sanctions based on a frivolous appeal – but noted the appeal’s weakness “from both a factual and a legal stand point” and that it approached “wasting the court’s time and unduly delaying more deserving litigants.” [See TO:195-196]

 

Finally, in Vehicle IP, LLC v. General Motors Corp., 1/6/09 (J. Prost, J. Bryson, J. Mayer, dissenting), the claim construction issue (with respect to a patent relating to a GPS system for providing directions) was whether the term “coordinate” meant: 1) “any of a set of numbers that provides the position of a point,” i.e., a longitude-latitude (X and Y value) pair of numbers -- which definition the accused systems did not infringe, or 2) the broader “any one of a set of numbers” for providing the position of a point; that is, as argued by Judge Mayer, a coordinate can be anything that describes a particular point on a line, on a plane or surface, or in space, which would include a numeric value (“a scalar”) describing an offset to a fixed point (e.g., 500 meters away) along a known curve, such as a road.  The majority adopted the narrower meaning -- “[r]egardless of whether the district court correctly identified the term’s ordinary meaning” -- based on the plain language of the claims and a “clear disclaimer” in the prosecution history, while Judge Mayer relied on the “quite broad” plain ordinary meaning of “coordinate” (and also obviously disagreed that there was a prosecution disclaimer). [See TO:326-328, 333-334]  Notably, with regard to prosecution disclaimer, the majority cited the court’s recent decision in 800 Adept, 8/29/08, “recognizing that prosecution disclaimer is ‘typically invoked to limit the meaning of a claim term that would otherwise be read broadly,’ but consulting the prosecution history in that case ‘as support for the construction already discerned from the claim language and confirmed by the written description.’” [See TO:404-425 for the current issues and law relating to prosecution disclaimer]

HAPPY NEW YEAR!

 

          Once again, The Outline highlights (in red) both the PRECEDENTIAL (8) and NONPRECEDENTIAL (4) decisions issued by the Federal Circuit during the past three weeks (prior to today).

 

In PRECEDENTIAL decisions, the issues included: Means-plus-function claiming [See TO:453-464, 541-545], Infringement (including contributory and inducing infringement) [See TO:500-512, 522-524], Permanent injunctions [See TO:657-667], Obviousness [See TO:745-751, 755-765, 786-793, 814], Inequitable conduct [See TO:883-934], PTO/BPAI regulations [See TO:120, 1129-1131], Personal jurisdiction [See TO:100-110], Admissibility of (patent law) expert testimony [See TO:1026-1032, 1036-1037], Writs of mandamus [See TO:194-197], and Waiver [See TO:152-157].

 

          In NONPRECEDENTIAL decisions, the issues included: Patentable subject matter [See TO:689-702], PTO’s claim interpretation [See TO:370-371, 682-683], Section 271(f)’s application to method claims [See TO:517-520], the Federal Circuit’s mandate rule [See TO:182-183], and Ethics (and related issues) [See TO:162-164].

         

          In PRECEDENTIAL decisions, the court in Acumed LLC v. Stryker Corp., 12/30/08 (J. Lourie, J. Mayer, J. Gajarsa) made very clear the district court’s discretion in granting permanent injunctions.  The court ruled that the district court did not abuse its discretion in granting an injunction, even though the patentee had previously licensed the patent to other competitors, and there was evidence of alleged public health concerns with the patentee’s commercial product (an orthopedic nail used for the treatment of fractures of the humerus, or the upper arm bone).  The court concluded, however, that the district court’s decision was “a close case,” especially with regard to the irreparable harm and lack of adequate remedy at law prongs of the four-factor test, in view of the past licensing of the patent, and the public interest prong, in light of testimony that the accused product was medically superior to the patentee’s product.  “Nonetheless, the standard of review, viz., abuse of discretion, compels our decision to affirm the district court.” [See TO:657-667 for the current law and issues relating to permanent injunctions after eBay (S.C.)]           

         

          The court in In re TS Tech USA Corp., 12/29/08 (J. Rader, C.J. Michel, J. Prost) granted TS Tech’s petition for a writ of mandamus (based on Fifth Circuit law and Volkswagen (5^th Cir. 2008) (en banc)) and thereby directed the District Court for the Eastern District of Texas to transfer the case to the “clearly more convenient” District Court for the Southern District of Ohio, after concluding that TS Tech had met its “difficult burden” of establishing that the district court “clearly” abused its discretion in denying transfer of venue. [See TO:194-197 for the current law and issues relating to writs of mandamus, and TO:994-995 relating to transfer of venue under 28 USC § 1404(a)]

 

          In Sundance, Inc. v. Demonte Fabricating Ltd., 12/24/08 (J. Moore, J. Dyk, J. Prost), the court ruled that the district court abused its discretion -- in its “gatekeeping role” under Daubert (S.C.) and Fed. R. Evid. 702 -- by allowing the challenger’s patent law expert -- a person not skilled in the pertinent art of tarps and covers for truck trailers -- to testify before the jury as an expert on the issues of noninfringement and invalidity.  The court held: “Unless a patent lawyer is also a qualified technical expert [here, he was not, which the court made clear], his testimony on these kinds of technical issues is improper and thus inadmissible,” as “[t]estimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702.”  The court noted, however, “that patent lawyers are often qualified to testify as technical experts, but such a qualification must derive from a lawyer’s technical qualifications in the pertinent art.”  Also important, the court clarified the amount of technical expertise necessary to be qualified as a “technical expert,” stating that Rule 702 does not necessarily require “a witness to possess something more than ordinary skill in the art to testify as an expert,” as a witness (including a patent lawyer having the relevant scientific background?) “possessing merely ordinary skill will often be qualified” to testify as an expert in patent trials. [See TO:1026-1032]

 

          With no expert testimony supporting obviousness, the challenger lost, right?  Not so here, because the court ruled that the present case happened to be a “simple technology” case in which no technical expert testimony was required to establish obviousness and, the court also ruled, there were no underlying factual issues in dispute as to obviousness. [See TO:1036]  Therefore, the court was able on its own to conclude, based on the simple facts and KSR (S.C.), that the benefits of combining the cited prior art (one reference of which the district court inexplicably misread as not being relevant prior art) would have been “inescapably obvious . . . to a cover designer of ordinary skill.” [See TO:755-765, 774-775 regarding OBVIOUSNESS and motivation to combine or modify prior art, including the court’s citation of various rules from KSR (S.C.) relating to combining old elements from the prior art to produce the expected result]

 

          In Ricoh Co. v. Quanta Computer Inc., 12/23/08 (per curium (J. Linn, J. Dyk, J. Gajarsa, dissenting-in-part)), the court held that a party that sells or offers to sell software (i.e., containing a computer’s instructions to perform a method) does not directly infringe a patented method under Section 271(a). [See TO:522-524]  With respect to contributory infringement, the court held that Section 271(c) applies not only to the bare sale of an infringing component, but also to the sale of that component (here, hardware or software) as part of a larger product or device (here, optical disc drives) having additional, separable, substantially noninfringing component(s) or features. [See TO:510-512, including a brief summary of Judge Gajarsa’s dissent]  With respect to inducing infringement, the court ruled based on Grokster (S.C.) that the required showing of specific intent to infringe does not require evidence that the accused indirect infringer was successful in communicating a message of encouragement to the alleged direct infringer, but rather simply that the message was sent.  The court also provided several examples of how specific intent might be shown based on circumstantial evidence, including when the accused infringer controls the design and manufacture of the accused product. [See TO:500-510]  

 

Other issues included: Obviousness of overlapping ranges [See TO:786-793, 814] and infringement of method claims containing the transitional term “comprising.” [See TO:314-316]

 

          Hyatt v. Dudas, 12/23/08 (J. Gajarsa, J. Newman, D.J. Ward) involved an appeal from the District Court of D.C. of a Section 145 action.  The district court concluded that the BPAI had failed to comply with Rule 1.192(c)(7) when selecting representative claims upon which it based its review of the examiner’s rejection of groups of the about 2,400 claims in Hyatt’s twelve applications.  The Federal Circuit agreed with the district court’s holding that the BPAI should not have grouped claims that had been rejected under Section 112, first paragraph, for lack of written description unless those claims shared a limitation that the BPAI had found to have not been disclosed by the specification.  Generally, the Federal Circuit held based on its prior decision, In re McDaniel (2002) (which seemed to address the exact same issue as in the present case, but with respect to Section 103 instead of Section 112, first paragraph), that a “ground of rejection” for purposes of Rule 1.192(c)(7) “is not merely the statutory requirement for patentability that a claim fails to meet [i.e., here, Section 112] but also the precise reason why the claim fails that requirement.” (emphasis added) [See TO:1129-1131]

 

          Other issues included: the Federal Circuit’s jurisdiction over remand orders in Section 145 actions [See TO:36-37], and waiver in the context of Rule 1.192(c)(7). [See TO:152-157] 

 

          In Rentrop v. Spectranetics Corp., 12/18/08 (D.J. Walker, C.J. Michel, J. Friedman), the court ruled that the patent challenger waived its challenge to the jury instruction on obviousness based on KSR (S.C.) when it failed to bring the argument to the district court’s attention before entry of judgment, even though KSR had been decided almost four months earlier.  The court held generally that “when there is a relevant change in the law before entry of final judgment, a party generally must notify the district court; if the party fails to do so, it waives arguments on appeal that are based on that change in the law.” [See TO:152-157] 

 

The Federal Circuit ruled on the merits of the jury instruction challenge anyway (in dicta), “not[ing] that the jury instructions on obviousness in this case appear to be consistent with KSR.”  Interestingly, with respect to the portion of the instructions that the challenger argued impermissibly prohibited an “obvious to try” inquiry under KSR, the court explained: “Read in context, this instruction states, correctly, that the test for obviousness is not whether it would be obvious to try to solve the problem that the invention solves.  The instruction does not imply that a showing that the specific combination of elements was obvious to try is insufficient to find obviousness.” [See TO:775-776]  

 

          Other issues included: Expert testimony for proving infringement [See TO:1036-1037], and Inequitable conduct. [See TO:883-934]

 

          In Avocent Huntsville Corp. v. Aten Int’l Co., 12/16/08 (J. Linn, J. Schall, J. Newman, dissenting), the majority affirmed the district court’s dismissal of the plaintiff’s claims for lack of personal jurisdiction over a Taiwanese company in a suit for declaratory judgment of noninfringement and invalidity of the Taiwanese company’s patents (as well as claims for federal unfair competition and intentional interference with business or contractual relations under Alabama law).  Specifically, the court ruled that the plaintiff failed to allege that the defendant purposefully directed any activities beyond merely sending infringement notice letters at residents of the forum and that the declaratory judgment action arose out of or related to those activities.  “Other activities,” the majority ruled, do not include the defendant-patentee’s sales activities, stating that the court has held in previous cases that evidence of the defendant’s sales within the forum of products, whether covered by the relevant patent(s) or not, is insufficient for specific personal jurisdiction over the patentee (but may be sufficient for general jurisdiction, which requires a higher burden to establish), as such activities “do not, in the jurisdictional sense, relate in any material way to the patent right that is at the center of” the declaratory judgment action.  Judge Newman, disagreeing with the majority, opined that the entirety of the contacts with the forum, as to both the plaintiff and defendant, adequately supported personal jurisdiction in Alabama. [See TO:100-110]

 

          The court in Welker Bearing Co. v. PHD, Inc., 12/15/08 (J. Rader, J. Schall, J. Prost) suggested the disadvantages of using means-plus-function claiming based on Section 112, sixth paragraph -- under which a claim is literally infringed when the relevant structure in the accused product performs the identical function recited in the claim and is identical or equivalent to “the corresponding structure” described in the specification. [See TO:541-545]  Here, the court construed the phrase “mechanism for moving said finger . . . .” as a means-plus-function limitation (“mechanism” alone being the same as “means”), thus limiting the claim’s literal scope to the only corresponding structure disclosed in the specification, which the court ruled was “substantially different” from, and thus not infringed by, the accused product. [See TO:453-464, 541-545]  Specifically, the court advised claiming an invention using structural claim language, i.e., which structural language would not be necessarily restricted to the disclosed embodiments and equivalents.  The advantage of claiming this way (providing as an example, “finger displacement mechanism”), the court explained, is that the court could have “inquired beyond the vague term ‘mechanism’ to discern the understanding of one of skill in the art.”  

 

Additionally, an interesting sub-issue related to the doctrine of claim differentiation, in which the court ruled that a difference between claims in different patents -- here, the patentee removed the “rotating” limitation from the claims by filing a continuation application -- sharing the same specification with the same structure corresponding to the claimed function of a means-plus-function claim, does not change the meaning of the means-plus function limitation. [See TO:420-426]

     

          In NONPRECEDENTIAL decisions, the court in Classen Immunotherapies, Inc. v. Biogen IDEC, 12/19/08 (J. Moore, J. Newman, D.J. Farnan) affirmed the district court’s grant of summary judgment that the claims (to “[a] method for determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals, relative to a control group of mammals,” comprising an “immunizing” step and a “comparing” step”) were invalid under Section 101 based on In re Bilski and their failure to satisfy the “machine or transformation test,” stating without explanation that the claims were neither “tied to a particular machine or apparatus” nor did they “transform[] a particular article into a different state or thing.” [See TO:689-702; See also PATENTLYO, 12/19/08, for the complete text of the invalid claim]  

 

In In re Wheeler, 12/19/08 (J. Newman, J. Mayer, J. Lourie), the court rejected the BPAI’s “broadest reasonable interpretation” of the claims (and finding of anticipation) which was not “consistent with the specification” and the claim language (citing Phillips), both of which stated that the entire claimed “illuminated fishing pole” was transparent and lighted along its length (as distinguished from the prior art fishing pole, which was not). [See TO:370-371, 682-683]

 

In Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 12/18/08 (J. Lourie, J. Newman, J. Mayer), the court affirmed the district court’s decision permitting overseas infringement damages under Section 271(f), while ruling that the Supreme Court’s decision in Microsoft v. AT&T did not overturn Federal Circuit precedent holding that Section 271(f) applies to method claims, including Union Carbide, 10/3/05 (in which the full court was not unanimous in its approval of the court’s holding, specifically Chief Judge Michel, Judge Lourie and Judge Linn, all of whom dissented from the order denying en banc review, and opined that Section 271(f) does not apply to method claims). [See TO:517-520, including a brief summary of the Union Carbide dissent]  Nonetheless, the court in the present case recognized the well-established rule that “[a]s a panel, we cannot reverse the holding of another panel of this court.” [See TO:191-192]

 

Other issues included: Apparatus vs. method claims, relating to infringement damages [See TO:522-524], and the Federal Circuit’s mandate rule [See TO:182-183].

 

Finally, in Respironics, Inc. v. Invacare Corp., 12/16/08 (J. Linn, J. Schall, J. Clevenger), the court addressed a variety of claim construction issues, including the effect of the term “said” on the order of steps in a method claim. [See TO:452]  Importantly, the court also (again) announced and applied (here, in the context of waiver) the rule that counsel are “not only advocates for their clients; they are also officers of the court and are expected to assist the court in the administration of justice, particularly in difficult cases involving complex issues of law and technology.” Allen Eng’g (2002) [See TO:162-164]

The Outline highlights (in red) the Federal Circuit decisions issued during the past three weeks (prior to yesterday) relating to the following patent issues: Claim construction [See TO:293-484], Infringement [See TO:484-487], Anticipation and obviousness of chemical compounds [See TO:692-694, 783-792], Award of attorney fees in Hatch-Waxman cases [See TO:288-290], the Federal Circuit’s jurisdiction of appeals from “final judgments” [See TO:35-43] and denials of preliminary injunctions [See TO:43-46], and Waiver of patent rights in standards-setting organizations (SSO’s) [See TO:935-936].

The Outline also highlights two decisions addressing trademarks [See TO:1056-1085], including likelihood of confusion in TTAB appeals [See TO:1068-1076], and standing and collateral estoppel when filing a petition to cancel a trademark registration [See TO:947-951, 1082-1085].

The Federal Circuit issued six precedential decisions and three nonprecedential decisions (excluding Rule 36 affirmances).  Two of the precedential decisions were Hatch-Waxman pharmaceutical cases, which will be discussed first, beginning with Sanofi-Synthelabo, followed by Takeda.

“For chemical compounds, the structure of the compound and its properties are inseparable considerations in the obviousness determination,” the court ruled in Sanofi-Synthelabo v. Apotex, Inc., 12/12/08 (J. Newman, J. Lourie, J. Bryson) (citing In re Papesch (CCPA 1963) and In re Sullivan, 8/29/07).  The court relied on this well-established rule in concluding that Sanofi’s patented enantiomer (a platelet aggregation inhibitor, which is commercially marketed as the blockbuster drug Plavix® for treating and preventing blood clots which may cause heart attacks and strokes) was unpredictable and thus nonobvious over the prior art disclosure of the enantiomer’s racemate. [See TO:783-792]  Indeed, the court’s ruling was very similar to its ruling in Forest Labs, 9/5/07 (relating to escitalopram oxalate, an antidepressant commercially marketed as Lexapro® [See TO:270], and holding that the patented enantiomer would not have been obvious in light of the known racemate, where the prior art failed to enable the separation of the claimed enantiomer from the other enantiomer of the prior art racemate, and the claimed enantiomer was shown to have unexpected therapeutic properties [See TO:783-784]).  The court in the present case based its conclusion largely on the expert trial testimony leading to the district court’s finding of the highly desirable, unexpected and unpredictable property of the claimed enantiomer, namely the rare property of “absolute stereoselectivity” whereby separating the two enantiomers produced the claimed enantiomer which provided all of the antiplatelet activity and none of the adverse neurotoxicity of the prior art racemate.  Another significant finding of the district court supporting nonobviousness was the unpredictability of separating the claimed enantiomer from its other enantiomer. [See TO:756-757] Generally, the court’s decision on obviousness cites and applies the rules relating to structural obviousness, as they pertain to the patentability of enantiomers over their prior art racemates. [See TO:783-792]  The improper use of hindsight knowledge also was highlighted, with the court concluding that “[o]nly with hindsight knowledge that the dextrorotatory enantiomer has highly desirable properties, can Apotex argue that it would have been obvious to select this particular racemate and undertake its arduous separation.” [See TO:753-756]

Additionally, anticipation of the claimed enantiomer by the prior art patent disclosing the racemate along with the general statement that the prior art invention included “both enantiomeric forms or their mixture” also was rejected, based on a lack of enablement for separating the enantiomers [See TO:695-697] and the court’s additional ruling that the “knowledge that enantiomers may be separated is not ‘anticipation’ of a specific enantiomer that has not been separated, identified, and characterized.” [See TO:692-694]

Takeda Chemical Industries, Ltd. v. Mylan Laboratories, Inc., 12/8/08 (J. Lourie, J. Rader, J. Bryson, concurring) involves the appeal of the attorney fees portion of the case in which the court previously held (in Takeda, 6/28/07) that Takeda’s patent was nonobvious and enforceable. [See TO:785-792]  When a patent has been infringed by the filing of an ANDA (with a Paragraph IV certification) under the Hatch-Waxman Act, Section 271(e)(4) provides for the grant of attorney fees under Section 285, which in turn allows the court to award reasonable attorney fees to the prevailing party in exceptional cases.  However, the types of conduct that constitute an “exceptional” case under Section 285 for awarding attorney fees under Section 271(e)(4) were limited in Yamanouchi (Fed. Cir. 2000) to a baseless and “wholly unjustified” paragraph IV certification in an ANDA combined with litigation misconduct. [See TO:288 and “Willful infringement,” citing Glaxo v. Apotex, 7/27/04 (holding that the mere filing of an ANDA or certification cannot constitute an act of willful infringement compensable by attorney fees under the Hatch-Waxman Act)]  But here, the court’s message going forward seems clear: For anyone thinking about filing an ANDA with a Paragraph IV certification, make absolutely sure that your “detailed statement of the factual and legal basis of the opinion of the applicant that the patent is invalid” (as required under 21 USC § 355(j)(2)(B)(iv)(II)) is well-supported -- which might require the support of an appropriate scientific expert, and also make sure to understand the expert’s reasons for believing the patent to be invalid (not to mention making sure that your expert knows what he or she is talking about).  In other words, for new ANDA filings, is there enough in the court’s decision to at least suggest that a “baseless” “post-Takeda (2008)” certification and letter, by themselves, are sufficient for a court to award attorney fees under Sections 271(e)(4) and 285 -- even without a later showing of litigation misconduct? – “Well-supported filings challenging the validity and infringement of patents owned by an NDA holder should not raise the specter of an unjustified holding of an exceptional case.”  For those Paragraph IV certifications made prior to the court’s decision, the Yamanouchi rule would presumably still apply -- thus requiring for an award of attorney fees a baseless and “wholly unjustified” paragraph IV certification in the ANDA and litigation misconduct – “[T]he district court found the case exceptional based on the specific circumstances involved in this case, vis., baseless certification letters compounded with litigation misconduct.” [See TO:288-290 for a complete summary of the issues in Takeda]      

          In Ilor, LLC v. Google, Inc., 12/11/08 (J. Linn, J. Mayer, J. Moore), the parties disagreed on whether the Federal Circuit’s jurisdiction over the appeal included other than the patentee’s appeal of the district court’s denial of a preliminary injunction (for which appellate jurisdiction is provided separately by statute, under 28 USC § 1292(a)(1) [See TO:43]).  The issue was thus whether there was an appealable judgment -- based either on a final judgment or the district court’s certification of its decision for immediate appeal under FRCP 54(b) -- so that the Federal Circuit could also consider on appeal the district court’s grant of summary judgment of noninfringement and the court’s sua sponte dismissal of the appellant’s remaining claims.  The Federal Circuit concluded that neither condition was met, because the district court’s order, first, did not expressly address the defendant’s pending counterclaims, as required, and second, the court’s inclusion in the order of the words (similar to those in Rule 54(b)) that there was “no just cause for delay” failed to satisfy the rule’s requirements.  Specifically, the court ruled that “the bare recitation of the ‘no just reason for delay’ standard of Rule 54(b) is not sufficient, by itself, to properly certify an issue for immediate appeal.”  Instead, the district court’s order must set forth the circumstances justifying an immediate appeal (or such circumstances must otherwise be discernable from the record).  Not surprisingly, however, the Federal Circuit ruled anyway (well, “note[d]” (in footnote 2)) -- presumably for efficiency -- that summary judgment of noninfringement was appropriate, stating: “While we do not address the district court’s grant of summary judgment of noninfringement, we note that the claim construction we affirm herein [in connection with affirming the denial of the requested preliminary injunction] was the basis for that decision, there being no dispute over infringement of claim 26 under that claim construction.” [See TO:35-43 for more details and the cases relevant to the Federal Circuit’s “final judgment” jurisdiction]

Also noteworthy, the court’s claim construction (to a method for enhancing a hyperlink) addressed: 1) the importance of claim language [See TO:316-320], 2) resorting to the specification and prosecution history when the claim language is ambiguous [See TO:362-363], and 3) the use of the abstract for construing claims [See TO:337-339].  The most significant claim construction issue related to the requirements for rescinding a prosecution disclaimer made during prosecution of a parent application, for the purpose of obtaining a broader claim scope in a continuation application based on different claim language.  In short, the applicant must put the examiner on notice of such intention, or otherwise the disclaimer, during litigation, may be applied also to the continuation claims. [See TO:393-395, which also summarizes the cited Hakim case]

          The court also addressed several claim construction issues in Netcraft Corp. v. eBay, Inc., 12/9/08 (J. Prost, J. Bryson, J. Linn), relating to a claimed internet billing method for which the court agreed with the district court that the step of “providing a communications link through equipment of the third party” (which language was not found in the common specifications) required providing customers with internet access.  The court therefore affirmed summary judgment of noninfringement because the defendants, eBay and PayPal, did not provide their customers with internet access.  In particular, the court agreed with the district court that the specification when read in its entirety (including the abstract (see also Ilor, above) and the summary of the invention) required providing customers with internet access. [See TO:337-341]  Two aspects of the court’s construction will be addressed. 

The first is the court’s ruling that the use of the phrase “the present invention” (which the patentee used repeatedly in the summary of the invention) “does not ‘automatically’ limit the meaning of claim terms in all circumstances, [but] that such language must be read in the context of the entire specification and prosecution history.”  In other words, there is nothing wrong with describing “the present invention” in the specification (because that’s what the specification is for, describing the invention, or the “present” invention).  What’s wrong -- or limiting -- is when the phrase “the present invention” is followed by a narrow description of the invention, as it was in the present case (i.e., “the present invention . . . [t]he provider creates access to the Internet for the customer through the provider’s equipment.”)  Accordingly, the court “agreed with the district court that the common specification’s repeated use of the phrase ‘the present invention’ describes the invention as a whole.” [See TO:464-470]

The second aspect of the court’s construction is whether, and to what extent, an applicant can use the prosecution history to broaden the scope of a claim that has been clearly limited by the specification?  The court here appears to permit such use.  The district court in the present case determined that it was unnecessary to consider the prosecution history arguments made by the parties in support of their respective claim construction positions “when the patent itself was clear” in requiring providing customers with internet access.  The Federal Circuit, on the other hand, while “agree[ing] with the district court that the claims read in light of the entire specification” indicated that the disputed claim phrase “require[d] providing customers with internet access,” also agreed with the patentee that the district court should have considered the prosecution history.  The court then proceeded to consider both the accused infringer’s arguments (which were obviously consistent with the court’s construction requiring providing internet access), and the patentee’s arguments for a broader construction not requiring providing internet access.  After considering the arguments, the court concluded, however, that the prosecution history “lack[ed] the clarity of the specification regarding the meaning of the claim terms at issue” and thus was “not particularly helpful to either party’s claim construction position.”  QUESTION: What if the prosecution history cited by the patentee clearly supported the patentee’s broader construction, i.e., showed that providing customers with internet access was an alternative embodiment, and not a requirement, of the claimed invention?  Would the prosecution history then negate the narrower construction required by the specification? [See TO:327-331 for the cases relevant to this issue]

 

          In The Procter & Gamble Co. v. Kraft Foods Global, Inc., 12/5/08 (J. Gajarsa, J. Bryson, J. Dyk), the court ruled first that it had jurisdiction where the district court’s order staying the litigation pending an inter partes reexamination effectively denied the patentee’s motion for a preliminary injunction without considering its merits, including considering and balancing the required factors. [See TO:43-46]  The court also addressed the district court’s broad discretion to manage its docket, including the “inherent power” to grant a stay of proceedings pending reexamination.  Specifically, the court ruled that the defendant was able to seek a stay under the district court’s inherent power, despite a specific provision in Section 318 stating that “the patentee” may request a stay in an inter partes reexamination.  Also, the court further ruled, a stay pending reexamination should ordinarily not be granted unless there is a substantial patentability issue raised in the reexamination proceeding; accordingly, both a preliminary injunction and a stay, the court also ruled, ordinarily should not be granted at the same time. [See TO:977-978] The court thus vacated the stay and remanded for a determination on the merits of whether P&G was entitled to a preliminary injunction.

          Qualcomm Inc. v. Broadcom Corp., 12/1/08 (J. Prost, J. Mayer, J. Lourie) was the next case after Rambus (2003) to address the duty to disclose patent information to a standards-setting organization (“SSO”).  The court held that Qualcomm waived the right to assert its patents, by failing to disclose them to the SSO for the “H.264 standard.” [See TO:935-936] The court also concluded that the patents were unenforceable against any products compliant with the H.264 standard, even though Broadcom raised waiver only as an affirmative defense. [See TO:180-184]  The court also affirmed the district court’s exceptional case finding and award of attorney fees to Broadcom based on Qualcomm’s misconduct in the SSO and litigation misconduct, including the concealment of documents which revealed Qualcomm’s participation in the SSO. [See TO:629-631]  The case addresses the affirmative defense of waiver, including “implied waiver.” [See TO:935-936]

          In NONPRECEDENTIAL decisions, the court addressed appeals from the TTAB in Hainline v. Vanity Fair, Inc., 12/5/08 (per curiam – J. Mayer, J. Dyk, D.J. Huff) and Farah v. Pramil S.R.L., 11/24/08 (per curiam – J. Mayer, J. Gajarsa, J. Prost).  The court in Hainline affirmed the TTAB’s decision sustaining Vanity Fair’s oppositions to the registration of Hainline’s marks, based on a likelihood of confusion.  The court addressed several of the DuPont factors, namely the fame of the mark, the similarity or “relatedness” of the goods, the similarity of trade channels, the similarity of the competing marks, and third party registrations. [See TO:1068-1076]  Farah related to the issue of standing for filing a petition to cancel a trademark registration, and also addressed collateral estoppel in the context of a petition to cancel. [See TO:947-951, 1082-1085]  Additionally, abandonment as a defense to prior use of a mark was addressed. [See TO:1082-1083]

          Finally, a written opinion in Unitronics v. Gharb, 12/3/08 (per curiam – J. Newman, J. Linn, J. Moore) apparently was necessary to reinforce for the pro se appellant the “black letter” law of infringement that “[t]he words of the claims define the scope of the patented invention” and that an accused device is not infringing “unless it contains each limitation of the claim, either literally or by equivalents.”  According to the court, Gharb “appear[ed] to believe that any PLC that is able to communicate over the GSM network infringes his patent, because part of his patent discloses PLCs communicating over GSM.”  Of course, the court ruled that “it was not enough for Gharb to prove that Unitronics sold PLCs that could communicate over GSM. To prove infringement, he was required to show that Unitronic’s devices met all of the limitations of the claim.” (emphasis in the original)  However, none of the evidence put forward by Gharb showed that any Unitronics product satisfied two of the claim elements or their equivalents. [See TO:484-487]

          The Outline highlights (in red) the Federal Circuit decisions issued during the past two weeks relating to, among other issues: Claim construction [See TO:287-473], the “On-sale” bar defense [See TO:698-707], Obviousness [See TO:714-777], and Obviousness-type double patenting [See TO:839-846].

 

          The Federal Circuit issued only one precedential decision and four nonprecedential decisions (excluding Rule 36 affirmances).

 

In PRECEDENTIAL DECISIONS, the court in In re Basell Poliolefine Italia S.P.A., 11/13/08 (J. Lourie, J. Linn, J. Newman, dissenting), discussed for obviousness-type double patenting the rule that the specifications of the earlier and later commonly owned patents (claiming chemical processes) could be examined to interpret the proper meaning and scope of the claims, before holding that the claims of the later patent were not patentably distinct from the claim of the earlier patent. (The court also addressed this issue in Pfizer, 3/7/08, and Astrazeneca, 7/23/07, neither of which were cited in the present case.) The court also addressed the “unusual circumstances” in which a two-way test, rather than the one-way test, is applied in determining double patenting, i.e., when the rejection for double patenting results from the PTO’s delay in causing a second-filed application (on an improvement) to issue before the first application (on the basic invention).  Here, however, the court ruled that a two-way test was not appropriate where the applicant was responsible for the delay (of nine years) in filing the rejected claims.  Judge Newman, dissenting, argued that delay is not a ground for double patenting. The court also ruled that the obviousness determination for double patenting is similar to, but not necessarily the same as, that for determining obviousness under Section 103, and thus the Graham v. John Deere (S.C.) factors need not be expressly considered. [See TO:839-844]

 

In NONPRECEDENTIAL DECISIONS, the court in Lacks Industries, Inc. v. McKechnie Vehicle Components USA, Inc., 11/21/08 (C.J. Michel, J. Clevenger, J. Moore), reversed the district court’s grant of summary judgment of invalidity based on the “on sale” bar defense after concluding that there were many genuine issues of material fact disputed, including whether a commercial offer for sale was made, whether the alleged offers for sale were made prior to the critical date, and whether the alleged offers for sale satisfied each of the limitations of the claimed methods. [See TO:698-707] 

 

In Medegen MMS, Inc. v. ICU Medical, Inc., 11/20/08 (J. Dyk, J. Rader, D.J. Walker, dissenting), the court once again confronted the twin axioms of claim construction that, on one hand, the claims must be read in view of the specification, of which they are a part, while on the other hand, it is improper to read a limitation from the specification into the claims.  The majority concluded that the district court violated the latter axiom above, in limiting the disputed term “plug” to being elastomeric (and thus excluding the accused rigid plug) because the specification described the claimed plug in all of the embodiments as being elastomeric.  The majority held correctly (based on the Phillips rules, as summarized in The Outline at TO:287-473) that “plug” should be given its ordinary meaning: “a member moveable between an open and closed position,” because: 1) the elastomeric limitation was not found in the claim itself, 2) there was no contention that the ordinary meaning of the term “plug” does not include a rigid plug, 3) the summary of the invention described the “plug” entirely in general terms, 4) although the specification described only a single embodiment of the claimed plug, as being elastomeric, the elastomeric plug was described only as a preferred “embodiment” of the invention, rather than as the invention itself or the invention as a whole, 5) the term “plug” had no special meaning in the medical field that required elastomericity, and 6) there was no clear disclaimer of non-elastomeric plugs in the specification.  However, if the dissenting Judge Walker is correct based on the district court’s findings that the claimed invention would not work without the plug having “the elastomeric and buckling or pivoting limitations,” or that these features were otherwise essential to the invention, the present case is no different than the Liebel-Flarsheim cases, in which the Federal Circuit, first in 2004, ruled that the claimed syringe injector was not limited to the preferred single embodiment in the specification of an injector having a pressure jacket (the court also based its ruling on the absence of any disclaimer of jacketless injectors), and then in 2007, ruled that the broadly construed claims were invalid as non-enabled based on undue breadth.  Thus, the present case may be another one of those “Beware of what one asks for!” cases. [See TO:804-806]

 

Obviousness, based on the rules announced by the Supreme Court in KSR, was at issue in Andersen Corp. v. Pella Corp., 11/19/08 (J. Schall, J. Rader, D.J. Alsup).  In particular, the district court relied on the teaching from KSR (S.C.) that common sense, as well as design incentives and other market forces, might make alternative uses of familiar items obvious, in granting summary judgment of invalidity based on obviousness.  The Federal Circuit disagreed, concluding that genuine issues of material fact existed as to the first Graham v. John Deere (S.C.) factor, i.e., the scope and content of the prior art.  Specifically, a genuine issue in dispute was whether the prior art (electromagnetic-shielding mesh) would have been part of the field of invention searched by a designer of the claimed invention (an insect screen with reduced visibility) and whether such an alternative use of the prior art mesh would have been obvious. [See TO:718-719, 746-748]  Evidence that the prior art taught away from the invention was also disputed, thus raising genuine issues of material fact as to whether the durability, transparency, and pricing of the prior art mesh would have discouraged its use in the claimed insect screen. [See TO:748-749]  The court also relied on the district court’s failure to consider the movant’s burden of overcoming the deference owed to the PTO examiner who had considered the prior art mesh in allowing the patent. [See TO:656-658]  Nonobviousness was also supported by evidence of secondary considerations. [See TO:758]

 

Finally, the court in Touchcom, Inc. v. Bereskin & Parr, 10/6/08 (Order) (J. Mayer), addressed the issue of attorney disqualification when an attorney represents a party against the attorney’s former client. [See TO:156-157]