Since the May 11 posting, the Federal Circuit issued fifteen (15)
PRECEDENTIAL and seven (7) NONPRECEDENTIAL decisions (exclud
Since the June 9
posting, the Federal Circuit issued four
(4)PRECEDENTIALand 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(5)NONPRECEDENTIAL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was affirmed in In re Baggett, 6/16/09 (nonprecedential), where the BPAI’s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the court in In re Mettke, 6/25/09 (nonprecedential)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 -- afterrejecting the
defendants’ argument that an attached proposed order and discretionary language
used in the joint stipulation converted the stipulation into a (voluntary) dismissal underFRCP 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’smandate (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]
June 09, 2009
THE OUTLINE keeps getting better – and its “Power” keeps getting
stronger
THE OUTLINE keeps getting
better – and its “Power” keeps getting stronger!
Since the May 11
posting, the Federal Circuit issued fifteen
(15)PRECEDENTIALand 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 AltanaPharma, 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 AltanaPharma, 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 AltanaPharma. [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 amotion 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]
May 11, 2009
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)PRECEDENTIALand 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 acommercial 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.” (citingRite-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.
April 20, 2009
Inventor claiming priority must put forward objective evidence (e
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 importationunder 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 aproduct 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 Kubinconfirmed: “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 Kubincourt 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. (citingFiers)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 thewritten description
analysis occurs “as of the filing date sought.” (citingVas-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 allegedprior 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
NONPRECEDENTIALdecisions, 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]
March 12, 2009
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
NONPRECEDENTIALdecisions, 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,seeApplied
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 EnzoBiochem, 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 mootedApplera’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]
February 18, 2009
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
PRECEDENTIALdecisions, 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 NONPRECEDENTIALdecisions, the court in ContechStormwater 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]
January 26, 2009
In NONPRECEDENTIAL decisions, the court in Tokyo Keiso Co
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 ofobviousness 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 stentdesign
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]
January 06, 2009
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 PRECEDENTIALdecisions, 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 NONPRECEDENTIALdecisions, 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 (5th
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 theexact 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 ClassenImmunotherapies, 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]
December 16, 2008
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’sracemate. [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 suasponte
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 alsoIlor,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 Hainlineaffirmed 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]
November 24, 2008
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 BasellPoliolefine
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]