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.”