Wednesday, October 13, 2010

Conception of an Invention


  • The test for conception is whether the inventor had an idea that was definite and permanent enough that one skilled in the art could understand the invention.
  • [Reproduction of an] invention previously conceived and reduced to practice by [someone else] cannot be conception because, if it were, the result would be that one who simply followed another inventor’s instructions to reproduce that person’s prior conceived invention would, by so doing, also become an “inventor.” Although the district court declined to read the “originality” requirement of 35 U.S.C. § 102(f) into § 102(g), originality is, nevertheless, inherent to the notion of conception.
  • The definition and test of conception employed in Burroughs Wellcome [Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994)], which speaks to the formation of an idea in the mind of the inventor, necessitates that the conception of an invention be an original idea of the inventor.

Thursday, August 5, 2010



  • Burden of Proof

  • While the burden typically rests with the patentee to prove infringement, the law makes exceptions. In actions alleging infringement of a process claim under § 271(g), there is a rebuttable presumption that the imported product was made from the patented process if the court finds: “(1) that a substantial likelihood exists that the product was made by the patented process, and (2) that the plaintiff has made a reasonable effort to determine the process actually used in the production of the product and was unable to so determine.” 35 U.S.C. § 295. If both conditions are met, “the product shall be presumed to have been so made, and the burden of establishing that the product was not made by the process shall be on the party asserting that it was not so made.” Id. Because the accused infringer is in a far better position to determine the actual manufacturing process than the patentee, fairness dictates that the accused, likely the only party able to obtain this information, reveal this process or face the presumption of infringement.

  • Commercial Embodiment:

  • Our case law does not contain a blanket prohibition against comparing the accused product to a commercial embodiment.

  • [W]hen a commercial product meets all of the claim limitations, then a comparison to that product may support a finding of infringement.

  • Doctrine of Equivalents (numerical ranges)

  • [T]he doctrine of equivalents can apply to a range—a numerical limitation in a claim. The mere existence of a numerical value or range in a claim, absent more limiting language in the intrinsic record, does not preclude application of the doctrine of equivalents.

  • The proper inquiry is whether the accused value is insubstantially different from the claimed value.


  • Means-Plus-Function

  • “Literal infringement of a means-plus-function limitation requires that the relevant structure in the accused device perform the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification.”

  • “A structure in the accused device constitutes an equivalent to the corresponding structure in the patent only if the accused structure performs the identical function in substantially the same way, with substantially the same result.”

Wednesday, August 4, 2010

Prosecution History Estoppel

  • Where an amendment narrows the scope of the claims, and that amendment is adopted for a substantial reason related to patentability, the amendment gives rise to a presumption of surrender for all equivalents that reside in the territory between the original claim and the amended claim.
  • Although there is no hard-and-fast test for what is and what is not a tangential relation, it is clear that an amendment made to avoid prior art that contains the equivalent in question is not tangential.
  • The applicability of prosecution history estoppel does not completely bar the benefit of the doctrine of equivalents from all litigation related to the amended claim. The scope of the estoppel must fit the nature of the narrowing amendment. A district court must look to the specifics of the amendment and the rejection that provoked the amendment to determine whether estoppel precludes the particular doctrine of equivalents argument being made.

Wednesday, July 7, 2010

Provisional Reference Date

  • A provisional application’s filing date is treated as both the patent’s priority date and its effective reference date.

Wednesday, June 2, 2010

Claim Construction

  • “Patent claims function to delineate the precise scope of a claimed invention and to give notice to the public, including potential competitors, of the patentee’s right to exclude. Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). This notice function would be undermined, however, if courts construed claims so as to render physical structures and characteristics specifically described in those claims superfluous.”
  • “[W]e do not redraft claims to contradict their plain language in order to avoid a nonsensical result.”
  • “[W]e construe claims with an eye toward giving effect to all of their terms even if it renders the claims inoperable or invalid.”


  • "[A]n expert’s subjective understanding of a patent term is irrelevant."

Monday, May 24, 2010

Equitable Estoppel

  • “In the context of patent infringement, the three elements of equitable estoppel that must be established are: (1) the patentee, through misleading conduct, led the alleged infringer to reasonably believe that the patentee did not intend to enforce its patent against the infringer; (2) the alleged infringer relied on that conduct; and (3) due to its reliance, the alleged infringer would be materially prejudiced if the patentee were permitted to proceed with its charge of infringement.”
  • “Misleading ‘conduct’ may include specific statements, action, inaction, or silence when there was an obligation to speak.”
  • “[The accused infringer] need not show a total loss of value in order to show material prejudice. Prejudice may be shown by a change of economic position flowing from actions taken or not taken by the patentee”

Friday, May 14, 2010

Standing to Sue

  • “[T]he touchstone of constitutional standing in a patent infringement suit is whether a party can establish that it has an exclusionary right in a patent that, if violated by another, would cause the party holding the exclusionary right to suffer legal injury.”
  • “[A] licensee is an exclusive licensee of a patent if it holds any of the exclusionary rights that accompany a patent.”
  • “Because an exclusive licensee derives its standing from the exclusionary rights it holds, it follows that its standing will ordinarily be coterminous with those rights. Depending on the scope of its exclusionary rights, an exclusive licensee may have standing to sue some parties and not others. For example, an exclusive licensee lacks standing to sue a party for infringement if that party holds a preexisting license under the patent to engage in the allegedly infringing activity. Similarly, an exclusive licensee lacks standing to sue a party who has the ability to obtain such a license from another party with the right to grant it. In both of these scenarios, the exclusive licensee does not have an exclusionary right with respect to the alleged infringer and thus is not injured by that alleged infringer. But if an exclusive licensee has the right to exclude others from practicing a patent, and a party accused of infringement does not possess, and is incapable of obtaining, a license of those rights from any other party, the exclusive licensee’s exclusionary right is violated."
  • "This court therefore holds that an exclusive licensee does not lack constitutional standing to assert its rights under the licensed patent merely because its license is subject not only to rights in existence at the time of the license but also to future licenses that may be granted only to parties other than the accused. If the accused neither possesses nor can obtain such a license, the exclusive licensee’s exclusionary rights with respect to that accused party are violated by any acts of infringement that such party is alleged to have committed, and the injury predicate to constitutional standing is met.”

  • “A patent owner may transfer all substantial rights in the patents-in-suit, in which case the transfer is tantamount to an assignment of those patents to the exclusive licensee, conferring standing to sue solely on the licensee.”
  • “[A] patent owner may grant an exclusive license to his patents under such terms that the license is tantamount to an assignment of the patents to the exclusive licensee. This happens when the exclusive license transfers ‘all substantial rights’ in the patents.
  • “When [all substantial rights are transferred], the exclusive licensee has sole standing to sue those suspected of infringing the patents’ claims.
  • “[W]here an exclusive license transfers less than ‘all substantial rights’ in the patents to the exclusive licensee, the exclusive licensee may still be permitted to bring suit against infringers, but the patent owner is an indispensable party who must be joined.”
  • “[T]he question is whether the license agreement transferred sufficient rights to the exclusive licensee to make the licensee the owner of the patents in question. If so, the licensee may sue but the licensor may not. If not, the licensor may sue, but the licensee alone may not. When there is an exclusive license agreement, as opposed to a nonexclusive license agreement, but the exclusive license does not transfer enough rights to make the licensee the patent owner, either the licensee or the licensor may sue, but both of them generally must be joined as parties to the litigation.”

Wednesday, May 5, 2010



  • “Obviousness is a question of law based on underlying factual inquiries including: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the prior art and the claimed invention as perceived before the time of invention; and (4) the extent of any objective indicia of non-obviousness.”
  • “If a person of ordinary skill, before the time of invention and without knowledge of that invention, would have found the invention merely an easily predictable and achievable variation or combination of the prior art, then the invention likely would have been obvious.”
  • “To preclude hindsight in this analysis, this court flexibly seeks evidence from before the time of the invention in the form of some teaching, suggestion, or even mere motivation (conceivably found within the knowledge of an ordinarily skilled artisan) to make the variation or combination.”
  • “A particular course or selection is not obvious to try unless some design need or market pressure or other motivation would suggest to one of ordinary skill to pursue the claimed course or selection. In other words, one of ordinary skill must have good reason to pursue the known options within his or her technical grasp.”
  • "Merely saying that an invention is a logical, commonsense solution to a known problem does not make it so."
  • “[A]lthough the standard of proof does not depart from that of clear and convincing evidence, a party challenging validity shoulders an enhanced burden if the invalidity argument relies on the same prior art considered during examination by the U.S. Patent and Trademark Office.”

    “When no prior art other than that which was considered by the PTO examiner is relied on by the attacker, he has the added burden of overcoming the deference that is due to a qualified government agency presumed to have properly done its job.” (quoting PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008))

Tuesday, April 27, 2010

Inequitable Conduct


  • "To prevail on the defense of inequitable conduct, the accused infringer must prove that the applicant misrepresented or omitted material information with the specific intent to deceive the PTO. The accused infringer must prove both elements—intent and materiality—by clear and convincing evidence. If the accused infringer meets its burden, then the district court must weigh the equities to determine whether the applicant’s conduct before the PTO warrants rendering the entire patent unenforceable."

  • "While honesty at the PTO is essential, low standards for intent and materiality have inadvertently led to many unintended consequences, among them, increased adjudication cost and complexity, reduced likelihood of settle-ment, burdened courts, strained PTO resources, increased PTO backlog, and impaired patent quality. This court now tightens the standards for finding both intent and materiality in order to redirect a doctrine that has been overused to the detriment of the public."

  • "To prevail on a claim of inequitable conduct, the accused infringer must prove that the patentee acted with the specific intent to deceive the PTO."

  • "In other words, the accused infringer must prove by clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it."

  • "Intent and materiality are separate requirements. A district court should not use a 'sliding scale,' where a weak showing of intent may be found sufficient based on a strong showing of materiality, and vice versa. Moreover, a district court may not infer intent solely from materiality. Instead, a court must weigh the evidence of intent to deceive independent of its analysis of materiality. Proving that the applicant knew of a reference, should have known of its materiality, and decided not to submit it to the PTO does not prove specific intent to deceive."

  • "Because direct evidence of deceptive intent is rare, a district court may infer intent from indirect and circumstantial evidence. However, to meet the clear and convincing evidence standard, the specific intent to deceive must be the single most reasonable inference able to be drawn from the evidence. Indeed, the evidence must be sufficient to require a finding of deceitful intent in the light of all the circumstances. Hence, when there are multiple reasonable inferences that may be drawn, intent to deceive cannot be found."

  • "The absence of a good faith explanation for withholding a material reference does not, by itself, prove intent to deceive."

  • "This court holds that, as a general matter, the materiality required to establish inequitable conduct is but-for materiality. When an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art. Hence, in assessing the materiality of a withheld reference, the court must determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference."

  • "Often the patentability of a claim will be congruent with the validity determination—if a claim is properly invalidated in district court based on the deliberately withheld reference, then that reference is necessarily material because a finding of invalidity in a district court requires clear and convincing evidence, a higher evidentiary burden than that used in prosecution at the PTO. However, even if a district court does not invalidate a claim based on a deliberately withheld reference, the reference may be material if it would have blocked patent issuance under the PTO’s different evidentiary standards."


  • Intent and materiality are separate requirements. A district court should not use a “sliding scale,” where a weak showing of intent may be found sufficient based on a strong showing of materiality, or vice versa.

  • To prove inequitable con-duct, the accused infringer must provide evidence that the applicant (1) misrepresented or omitted material information, and (2) did so with specific intent to deceive the PTO. Under Therasense, the materiality required to establish inequitable conduct is, in general, but-for materiality. When an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.

  • Inequitable conduct is equitable in nature, with no right to a jury, and the trial court has the obligation to resolve the underlying facts of materiality and intent.


  • “Inequitable conduct resides in failure to disclose material information, or submission of false material information, with an intent to mislead or deceive the examiner, and those two elements, materiality and intent, must be proven by clear and convincing evidence.”

  • “When both materiality and intent have been established, the court must balance the equities and determine whether the applicant’s conduct in prosecuting the patent application was egregious enough to warrant holding the entire patent unenforceable.”

  • “Despite some divergence, the great weight of Federal Circuit authority has followed Kingsdown Medical Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 876–77 (Fed. Cir. 1988) (en banc), and applied the rule that the ‘intent’ element of inequitable conduct is not simply intent to take the action or omission complained of, but intent to deceive or mislead the patent examiner into granting the patent.”

  • “What constitutes substantive involvement in the preparation or prosecution of the application, the issue on which this case turns, has not previously been addressed by this court. We read ‘substantively involved’ to mean that the involvement relates to the content of the application or decisions related thereto, and that the involvement is not wholly administrative or secretarial in nature.”

  • “Once a court finds that the individual had a duty of candor, the court must proceed to the dual prongs of materiality and deceptive intent, to determine whether that duty was violated.”

  • “If an individual is unable to assess the materiality of the information at issue, then he would lack the deceptive intent required to find that he committed inequitable conduct.”


  • “Intent to deceive cannot be inferred from even a high degree of materiality, but must be separately proved by clear and convincing evidence.”

Monday, April 26, 2010


  • “To satisfy the plain language of § 112, ¶ 1, [a patentee is] required to provide an adequate enabling disclosure in the specification; it cannot simply rely on the knowledge of a person of ordinary skill to serve as a substitute for the missing information in the specification.”
  • A court may consider the following factors “when determining if a disclosure requires undue experimentation: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.”
  • See also In re Wands, 858 F.2d 731 (Fed. Cir. 1988).

  • The open claim language chosen by the inventors does not grant them any forgiveness on the scope of required enablement.

Tuesday, April 13, 2010

Rule Against Recapture


  • “This court bars recapture because a patentee is only entitled to a reissue patent for broader claims when the patentee claimed less than he had a right to claim in the patent through error without any deceptive intent, not through deliberate amendments or arguments designed to convince an examiner to allow the claims.”

  • “[W]e seek to clarify that a patentee may violate the rule against recapture by claiming subject matter in a reissue patent that the patentee surrendered while prosecuting a related patent application.”

  • “When a reissue patent contains the unmodified original patent claims and the reissue claims, a court can only invalidate the reissue claims under the rule against recapture.”


  • Notwithstanding the limited ability to enlarge claim scope through reissue, the recapture rule prevents a patentee from regaining subject matter deliberately surrendered during the prosecution of the original patent.

  • A three-step test guides the analysis:(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.

Joint Infringement

  • Cases that had been considered under the joint infringement/divided infringement/single-entity rule will now be decided under the law of induced infringement.
  • "[W]e reconsider and overrule the 2007 decision of this court in which we held that in order for a party to be liable for induced infringement, some other single entity must be liable for direct infringement.  BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007).  To be clear, we hold that all the steps of a claimed method must be performed in order to find induced infringement, but that it is not necessary to prove that all the steps were committed by a single entity."
  • "It would be a bizarre result to hold someone liable for inducing another to perform all of the steps of a method claim but to hold harmless one who goes further by actually performing some of the steps himself."
  • "Unlike direct infringement, induced infringement is not a strict liability tort; it requires that the accused inducer act with knowledge that the induced acts constitute patent infringement.  See Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068 (2011)."

Wednesday, April 7, 2010

Joint Inventorship

  • "The interplay between conception and collaboration requires that each co-inventor engage with the other co-inventors to contribute to a joint conception."
  • "A primary focus of section 116 has thus always been on collaboration and joint behavior."
  • "A person must contribute to the conception of the claimed invention to qualify as a joint inventor."
  • "Our precedent has long required proof of misjoinder or nonjoinder of co-inventors by clear and convincing evidence."

Thursday, April 1, 2010

Declaratory Judgment Jurisdiction


  • An “adverse legal interest” requires a dispute as to a legal right—for example, an underlying legal cause of action that the declaratory defendant could have brought or threatened to bring. In the absence of a controversy as to a legal right, a mere adverse economic interest is insufficient to create declaratory judgment jurisdiction.

  • [E]conomic injury alone is insufficient to create standing….

  • We have recognized that, where a patent holder accuses customers of direct infringement based on the sale or use of a supplier’s equipment, the supplier has standing to commence a declaratory judgment action if (a) the supplier is obligated to indemnify its customers from infringement liability, or (b) there is a controversy between the patentee and the supplier as to the supplier’s liability for induced or contributory infringement based on the alleged acts of direct infringement by its customers.

  • When the holder of a patent with system claims accuses a customer of direct infringement based on the customer’s making, using, or selling of an allegedly infringing system in which a supplier’s product functions as a material component, there may be an implicit assertion that the supplier has indirectly infringed the patent.6 Likewise, when the holder of a patent with method claims accuses the supplier’s customers of direct infringement based on their use of the supplier’s product in the performance of the claimed method, an implicit assertion of indirect infringement by a supplier may arise.

  • While direct communication between a patentee and a declaratory plaintiff is not necessary to confer standing, the nature and extent of any communications between the declaratory plaintiff and the patentee are certainly relevant factors to consider when evaluating whether there is an Article III case or controversy between the parties.[W]e have held that a patentee’s grant of a covenant not to sue a supplier for infringement can eliminate the supplier’s standing to bring a declaratory judgment action….

  • "The district court found that these informal conversations did not constitute a threat of suit for patent infringement against a device that had not been seen and evaluated for infringement of any patent. We agree that the indirection reflected in these conversations did not produce a controversy of such 'immediacy and reality' as to require the district court to accept declaratory jurisdiction.

  • "MedImmune did not hold that a patent can always be challenged whenever it appears to pose a risk of infringement."


  • “[A] specific threat of infringement litigation by the patentee is not required to establish jurisdiction, and a declaratory judgment action cannot be defeated simply by the stratagem of a correspondence that avoids magic words such as ‘litigation’ or ‘infringement.’”

  • “In determining whether there is federal subject matter jurisdiction for declaratory judgment actions: ‘[I]t is the character of the threatened action, and not of the defense, which will determine whether there is federal-question jurisdiction in the District Court.’”

  • “Because the actual controversy in this case is over infringement, the declaratory defendant’s hypothetical coercive complaint here is a patent infringement suit. It is well-established that a claim for infringement arises under federal law. Even if the only issue in that suit would be a state law defense, subject matter jurisdiction does not depend on whether a federal law issue will be the crux of the case but instead whether federal patent law creates the cause of action.”

  • “The general rule, articulated repeatedly by the Supreme Court, is that declaratory judgment jurisdiction exists where the defendant’s coercive action arises under federal law. … We see no reason to depart from that general principle where the defense is non-federal in nature.”


  • "The concept of adverse legal interests requires that there be a dispute as to a legal right, such as an underlying legal cause of action that the declaratory defendant could have brought or threatened to bring, if not for the fact that the declaratory plaintiff had preempted it."


  • "[T]here is no simple test for determining when a preamble limits claim scope."

  • "A preamble to a claim may or may not be limiting, depending on the circumstances. In considering whether a preamble limits a claim, the preamble is analyzed to ascertain whether it states a necessary and defining aspect of the invention, or is simply an introduction to the general field of the claim. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1375 (Fed. Cir. 2008) (quotation marks omitted). A term is often limiting when the patentee has relied on it during prosecution to distinguish prior art, as such reliance demonstrates that the feature disclosed in the preamble is necessary to the patentability of the claim."



  • "Claims need not be plain on their face in order to avoid condemnation for indefiniteness; rather, claims must only be amenable to construction."

  • "Claim terms must provide a discernible boundary between what is claimed and what is not claimed…."

  • "However, an inventor need not explain every detail because a patent is read by those of skill in the art. … Well known industry standards need not be repeated in a patent."

  • "This court has repeatedly stated that a patent applicant need not include in the specification that which is already known to and available to a person of ordinary skill in the art."

  • “[B]ecause claim construction frequently poses difficult questions over which reasonable minds may disagree, proof of indefiniteness must meet ‘an exacting standard.’ Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008). Only claims ‘not amenable to construction’ or ‘insolubly ambiguous’ are indefinite. Id. at 1250 (quoting Datamize, 417 F.3d at 1347). A claim is not indefinite merely because parties disagree concerning its construction. An accused infringer must thus demonstrate by clear and convincing evidence that one of ordinary skill in the relevant art could not discern the boundaries of the claim based on the claim language, the specification, the prosecution history, and the knowledge in the relevant art.”


  • "Not all terms of degree are indefinite. However, the specification must provide some standard for measuring that degree."

  • "Although 'readily'does not refer to a mathematical measure of degree, in Datamize [417 F.3d 1342, 1351 (Fed. Cir. 2005)], we addressed the 'purely subjective' claim term 'aesthetically pleasing' and stated that, as with terms of degree, “a court must determine whether the patent’s specification supplies some standard for measuring the scope of the phrase."


  • "Claims using relative terms such as ‘near’ or ‘adapted to’ are insolubly ambiguous only if they provide no guidance to those skilled in the art as to the scope of that requirement."

  • "Here, a person of ordinary skill in the field would understand the meaning of ‘near’ and ‘adapted to’ because the environment dictates the necessary preciseness of the terms."

  • "The fact that the claim is not defined using a precise numerical measurement does not render it incapable of providing meaningful guidance to the jury because the claim language, when taken in context of the entire patent, provides a sufficiently reasonable meaning to one skilled in the art of distributed power systems."


  • “The claims are not indefinite even if some experimentation is required to determine the exact level of detection achieved by the applicants using their exemplary linkage groups.”

  • “As a preliminary matter, we observe that a claim cannot be both indefinite and anticipated. … If a claim is indefinite, the claim, by definition, cannot be construed. Without a discernable claim construction, an anticipation analysis cannot be performed.”

Friday, February 5, 2010

SEB v. Pentalpha

This case involved a patent for deep-fryers with a well insulated skirt. After a trial and a jury verdict for the patentee, several issues were raised on appeal. A few of particular interest are mentioned below.

More on the Knowledge-of-the-Patent Requirement for Inducement. Knowledge of the patent need not be shown if it can be shown that the defendant actively disregarded a known risk. In DSU Medical, the Federal Circuit provided the standard for the intent needed for a showing of inducement, including that such a showing necessarily includes knowledge of the patent. “This court’s opinion [in DSU Medical] did not, however, set out the metes and bounds of the knowledge-of-the-patent requirement.” (p. 22.) The court had stated “knew of the patent” in DSU Medical, not “knew or should have known,” so the defendant argued that lack of knowledge, regardless of whether the lack of knowledge may have been deliberate. “’[S]pecific intent’ in the civil context is not so narrow as to allow an accused wrongdoer to actively disregard a known risk that an element of the offense exists.” (p. 23) In this case, “the record shows no direct evidence that [the defendant] had actual knowledge of the patent before” a certain date. The court concluded that direct evidence of knowledge of the patent is not necessary to establish inducement. “[A] claim for inducement is viable even where the patentee has not produced direct evidence that the accused infringer actually knew of the patent-in-suit. This case shows such an instance. The record contains adequate evidence to support a conclusion that [the defendant] deliberately disregarded a known risk that [the plaintiff] had a protective patent.” (p. 25.) Several factors contributed to this conclusion, including the fact that the defendant failed to inform the attorney it hired to conduct a right-to-use study that it had copied the product at issue. The court also noted that “[t]his opinion does not purport to establish the outer limits of the type of knowledge needed for inducement.” (p. 26.)

Claim Construction for Preliminary Injunction and the Law of the Case. “This court’s prior affirmance of the district court’s preliminary injunction order does not make the district court’s claim construction in its 1999 opinion the law of the case.” (p. 8.)

Claim Construction and the Use of Different Terms in the Specification. “This court often assumes that different terms convey different meanings. That assumption, however, carries less weight when comparing a term in the claim to a term in the specification, especially where, as here, the specification only describes one embodiment.” (p. 10.)

Trial Procedure Note. Defendant sought JMOL after the jury verdict concerning prosecution history estoppel, but had not moved on this ground at the close of evidence. This procedural difference lead to a difference in the standard of review: “If an issue is not raised in a previous motion for a directed verdict, however, this court’s review is highly deferential.” (p. 13.)

General Verdict Rule. “The record therefore does not clearly indicate that the jury found damages based on inducement alone, or based on direct infringement alone, or both. The general verdict rule requires that the only way this court can affirm in such a circumstance is by determining that the jury’s finding of both direct infringement and inducement of infringement was proper.” (p. 19.) In this case, it did find that both findings were proper and upheld the damages award.

Another Procedural Note. “Importantly, [the patentee] does not ask this court to order a new trial on willfulness. Had it asked, this court might have granted the request in light of the district court’s conclusion that the willfulness verdict could have gone either way under the Seagate test.” (p. 32.)

Monday, January 25, 2010

Therasense v. Becton (2008-1511)

The patents in this case are in the area of disposable blood glucose test strips. (Another case between the same parties was decided on the same day.) The issues were decided on summary judgment and after a bench trial. Three issues involving obviousness, inequitable conduct, anticipation and noninfringement were addressed in this opinion. A couple of points of interest are mentioned below.

Obviousness: Commercial Success Nexus. The court concluded that there should be no presumption of a nexus between the patented features and commercial success because any success could not be attributed to a single patent. The accused device embodied at least two patents. (p. 16.)

Inequitable Conduct. “The penalty for inequitable conduct is severe, as an entire patent is rendered unenforceable. Therefore it is important that courts maintain a high standard.” (p. 18.) “This is one of those rare cases in which a finding of inequitable conduct is appropriate….” (p. 18.) Attorney argument about interpretation of claims and the teachings of prior art do not amount to inequitable conduct, but not disclosing contrary statements made to the EPO and “factual assertions as to the views of those skilled in the art, provided in affidavit form” are not attorney argument. (p. 27.) Intent was found based on the importance of the withheld statements to the PTO, the applicants knowledge of them, and the credibility of the witnesses that tried to explain why they were not disclosed.

Boehringer v. Barr Laboratories

Retroactive Terminal Disclaimer Not Effective to Avoid Obviousness-Type Double Patenting.
“[A] patentee may file a disclaimer after issuance of the challenged patent or during litigation, even after a finding that the challenged patent is invalid for obviousness-type double patenting.” (p. 10.) But a patentee cannot file a disclaimer after the earlier patent has expired. “The patentee cannot undo this unjustified timewise extension by retroactively disclaiming the term of the later patent because it has already enjoyed rights that it seeks to disclaim. Permitting such a retroactive terminal disclaimer would be inconsistent with ‘[t]he fundamental reason’ for obviousness-type double patenting, namely, to prevent unjustified timewise extension of the right to exclude. We therefore hold that a terminal disclaimer filed after the expiration of the earlier patent over which claims have been found obvious cannot cure obviousness-type double patenting.” (p. 12.)

Safe Harbor Provision Applies to All Subsequent Divisionals Provided the Examiner’s Original Demarcation of Independent Inventions Is Not Crossed. “[T]he safe-harbor provision may apply to a divisional of a divisional of the application in which a restriction requirement was entered. We note that this holding is fully consistent with the purpose of § 121—namely, to prevent a patentee who divides an application in which a restriction requirement has been made from risking invalidity due to double patenting.” (p. 20.) Upon the restriction requirement, the applicant had to file one or more divisional applications if it wanted to get a patent on the non-elected subject matter. The applicant “did so not by filing separate divisional applications on each of the inventions grouped by the examiner in the restriction requirement, but instead, by filing two successive divisionals to different combinations of the inventions identified in the restriction requirement. In doing so, [the applicant] neither violated the examiner’s restriction requirement nor risked loss of the safe harbor of § 121.” (p. 22.)

The full opinion, which includes a dissent, is here.

Therasense v. Becton (2009-1008)

The case involved a patent for electrochemical sensors for measuring glucose levels in blood. A trial was held and the jury found that the asserted claims were infringed under the doctrine of equivalents but were “invalid by reason of anticipation or obviousness.”

Jury Instructions on Anticipation Erroneous. On appeal, the patentee argued that the district court’s jury instruction on anticipation was erroneous. The jury instructions stated that “for anticipation, it is sufficient if the single reference would have informed those skilled in the art that all of the claimed elements could have been arranged as in the claimed invention.” (p. 8.) This was erroneous because “it makes sufficient, for purposes of anticipation, a prior art disclosure of individual claim elements that ‘could have been arranged’ in a way that is not itself described or depicted in the anticipatory reference.” (p. 8-9.) Anticipation requires that the “way in which the elements are arranged or combined in the claim must itself be disclosed, either expressly or inherently, in an anticipatory reference.” (p. 9.) “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.”

“The concept of ‘inherent disclosure’ does not alter the requirement that all elements must be disclosed in an anticipatory reference in the same way as they are arranged or combined in the claim.” (p. 9.) “For a claim to be anticipated, each claim element must be disclosed, either expressly or inherently, in a single prior art reference, and the claimed arrangement or combination of those elements must also be disclosed, either expressly or inherently, in that same prior art reference.” (p. 10.)

Error Harmless Because Claims Were Obvious as a Matter of Law. Despite the fact that the jury instructions on anticipation were erroneous, the error was determined to be harmless because the Federal Circuit concluded that the claims were obvious as a matter of law. {B]ecause the jury must at least have found the claims obvious,” the jury instruction on anticipation could not have changed the result.

In its obviousness analysis, the court rejected the patentee’s arguments that the invention solved a problem for which there was a long-felt need since the claims at issue were not limited to devices that solved the problem. “Because the claims are broad enough to cover devices that either do or do not solve the “short fill” problem, Abbott’s objective evidence of non-obviousness fails because it is not “commensurate in scope with the claims which the evidence is offered to support.” (p. 16.)

Friday, January 15, 2010

Schindler Elevator v. Otis Elevator

The patent in this case was for an elevator system that “recognizes a user when he or she enters an entry location of a building, then dispatches an elevator to bring the user to a destination floor based on user-specific data.” (p. 2.) At issue was the district court’s claim construction of “information transmitter” and “recognition device.” The construction imposed negative limitations that required the system to work “without any sort of personal action by the passenger,” which excluded any action “other than walking into the monitored area.” (p. 7.) The question was could the user of the elevator do anything but walk into the lobby in order to make the elevators work?

The majority determined that the user could take some personal actions in order to bring the transmitter to the recognition device, such as swiping a key card. The statements in the specification and the prosecution history that system was “hands-free,” “automatic,” and “contactless” applied after user information was transferred to the recognition device. So the user could swipe a key, but then could not push buttons to call the elevator or tell it which floor to go to. The court explained that “[e]ach time those terms are used, they modify the elevator’s ‘call entry’ operation, an operation that necessarily occurs after the information transmitter has been brought within range of the recognition device and after the transmitter has been actuated by the recognition device.” (p. 13.)

Similar statements in the prosecution history were also referring to what happens after the information has been transferred. “None of [the statements about being “hands-free”] speaks to the role a user plays in bringing a transmitter within range of a recognition device; nor was the prior art distinguished on that basis.” (p. 15.) Thus, they “do not constitute a ‘clear and unmistakable’ disavowal of personal action for the limited purpose of bringing the transmitter within range of the recognition device.” (p. 16.)

Dissenting in part, Judge Dyk agreed that the district court’s construction was too narrow but felt that the majority’s decision went too far. According to Judge Dyk, the disclaimer applied to all personal action after gaining entry into a building. “Contrary to the majority, it seems to me that the action of swiping a card to call the elevator separate from the action required to gain entry to the building is clearly within the disclaimer of both the specification and prosecution history.”