Patent Case Review

Transfer of Venue

2011-12-02T11:22:00.000-08:00

IN RE LINK_A_MEDIA DEVICES CORP. [ORDER]

Writ of mandamus granted and district court ordered to transfer case.

"[T]he district court placed far too much weight on the plaintiff’s choice of forum.... When a plaintiff brings its charges in a venue that is not its home forum ... that choice of forum is entitled to less deference."

"Neither § 1404 nor [3rd Circuit case] list a party’s state of incorporation as a factor for a venue inquiry. It is certainly not a dispositive fact in the venue transfer analysis, as the district court in this case seemed to believe."

"While advances in technology may alter the weight given to these factors [the convenience of the witnesses and the location of the books and records], it is improper to ignore them entirely."

For similar cases, see In Re Hoffmann-La Roche Inc., 587 F.3d 1333 (Fed. Cir. 2009); In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009); and In re TS Tech USA Corp., 551 .3d 1315, 1322 (Fed. Cir. 2008).

Prior Invention Under 102(g)(2)

2011-12-01T08:58:00.000-08:00

TEVA PHARMACEUTICALS INDUSTRIES LTD. V. ASTRAZENECA PHARMACEUTICALS LP

Prior invention under 102(g)(2) can be established by showing that the invention was first reduced to practice by another or that the invention was first conceived by another who then exercised reasonable diligence in reducing that invention to practice.

Dow, Mycogen Plant Sciences, and Invitrogen are consistent applications of the same rule. To establish prior invention, the party asserting it must prove that it appreciated what it had made. The prior inventor does not need to know everything about how or why its invention worked. Nor must it conceive of its invention using the same words as the patentee would later use to claim it.

Injunction/Irreparable Harm

2011-10-12T08:22:00.000-07:00

ROBERT BOSCH LLC. V. PYLON MANUFACTURING CORP.

We take this opportunity to put the question to rest and confirm that eBay jettisoned the presumption of irreparable harm as it applies to determining the appropriateness of injunctive relief. In so holding, we join at least two of our sister circuits that have reached the same conclusion as it relates to a similar presumption in copy-right infringement matters.

Although eBay abolishes our general rule that an in-junction normally will issue when a patent is found to have been valid and infringed, it does not swing the pendulum in the opposite direction. In other words, even though a successful patent infringement plaintiff can no longer rely on presumptions or other short-cuts to support a request for a permanent injunction, it does not follow that courts should entirely ignore the fundamental nature of patents as property rights granting the owner the right to exclude.

[W]ithout additional facts showing that the presence of additional competitors renders the infringer’s harm reparable, the absence of a two-supplier market does not weigh against a finding of irreparable harm.

Injuries that affect a “non-core” aspect of a patentee’s business are equally capable of being irreparable as ones that affect more significant operations.

A district court should assess whether a damage remedy is a meaningful one in light of the financial condition of the infringer before the alternative of money damages can be deemed adequate. While competitive harms theoretically can be offset by monetary payments in certain circumstances, the likely availability of those monetary payments helps define the circumstances in which this is so.

A party cannot escape an injunction simply because it is smaller than the patentee or because its primary product is an infringing one.

Intervening Rights

2011-09-26T08:48:00.000-07:00

MARINE POLYMER TECHNOLOGIES, INC. V. HEMCON, INC.

The doctrine of absolute intervening rights protects an accused infringer’s right to continue using, selling, or offering to sell specific products covered by reissued or reexamined claims when the particular accused product had been made before the date of the reissue or reexamination and the scope of the claims is substantively changed.
The doctrine of equitable intervening rights protects an accused infringer’s ability to make, sell, offer to sell, or use particular items of the same type that the accused infringer had made, purchased, or used before the reexamination even if the particular item was produced thereafter. It also protects a newly created product that was not of a type produced before the reexamination if the accused infringer made “substantial preparations” for manufacture of the product before the reissue or reexamination.

Unpatentable Subject Matter (abstract ideas)

2011-08-31T10:13:00.000-07:00

CLASSEN IMMUNOTHERAPIES, INC. V. BIOGEN IDEC

Methods that simply collect and compare data, without applying the data in a step of the overall method, may fail to traverse the §101 filter.

The ’283 claims do not include putting this knowledge to practical use, but are directed to the abstract principle that variation in immunization schedules may have consequences for certain diseases. In contrast, the claims of the ’139 and ’739 patents require the further act of immunization in accordance with a lower-risk schedule, thus moving from abstract scientific principle to specific application.

ULTRAMERCIAL, LLC. V. HULU, LLC.

Viewing the subject matter as a whole, the invention involves an extensive computer interface. This court does not define the level of programming complexity required before a computer-implemented method can be patent-eligible. Nor does this court hold that use of an Internet website to practice such a method is either necessary or sufficient in every case to satisfy § 101. This court simply finds the claims here to be patent-eligible, in part because of these factors.

Offer For Sale

2011-08-22T08:19:00.000-07:00

AUGUST TECH CORP v. CAMTEK LTD

Section 102(b) requires that “the invention was . . . on sale in this country” before the critical date. The Supreme Court has explained that the § 102(b) on-sale bar applies when two conditions are met before the critical date: (1) the product is the subject of a commercial offer for sale, and (2) the invention is ready for patenting. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998).

The issue presented in this case is whether the invention must be ready for patenting at the time the alleged offer is made. We conclude that it does not.

While the invention need not be ready for patenting at the time of the offer, consistent with our cases, we hold that there is no offer for sale until such time as the invention is conceived.

Therefore, we conclude that an invention cannot be offered for sale until its conception date. Hence, if an offer for sale is made and retracted prior to conception, there has been no offer for sale of the invention. In contrast, if an offer for sale is extended and remains open, a subsequent conception will cause it to become an offer for sale of the invention as of the conception date. In such a case, the seller is offering to sell the invention once he has conceived of it. Before that time, he was merely offering to sell an idea for a product.

Unpatentable Subject Matter (mental processes)

2011-08-19T08:37:00.000-07:00

CYBERSOURCE CORP. V. RETAIL DECISIONS, INC.

Mental processes are not patent-eligible subject matter because the application of only human intelligence to the solution of practical problems is no more than a claim to a fundamental principle.

It is clear that unpatentable mental processes are the subject matter of claim 3. All of claim 3’s method steps can be performed in the human mind, or by a human using a pen and paper. Claim 3 does not limit its scope to any particular fraud detection algorithm, and no algorithms are disclosed in the … specification.

Such a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101. Methods which can be performed entirely in the human mind are unpatentable not because there is anything wrong with claiming mental method steps as part of a process containing non-mental steps but rather because computational methods which can be performed entirely in the human mind are the types of methods that embody the basic tools of scientific and technological work that are free to all men and reserved exclusively to none.

We have never suggested that simply reciting the use of a computer to execute an algorithm that can be per-formed entirely in the human mind falls within the Alappat rule.

We agree with the district court that the claimed process manipulates data to organize it in a logical way such that additional fraud tests may be performed. The mere manipulation or reorganization of data, however, does not satisfy the transformation prong.

As we stated in Bilski, to impart patent-eligibility to an otherwise unpatentable process under the theory that the process is linked to a machine, the use of the machine must impose meaningful limits on the claim’s scope. In other words, the machine must play a significant part in permitting the claimed method to be performed. Here, the incidental use of a computer to perform the mental process of claim 3 does not impose a sufficiently meaningful limit on the claim’s scope.

[M]erely claiming a software implementation of a purely mental process that could otherwise be performed without the use of a computer does not satisfy the machine prong of the machine-or-transformation test.

Parsing Therasense v. Becton

2011-07-06T09:53:00.000-07:00

When it comes to undisclosed prior art, the Federal Circuit’s new standard outlined in THERASENSE, INC. V. BECTON, DICKINSON AND CO. for inequitable conduct, which was and intended to diminish the importance of inequitable conduct as a defense, is logically flawed. The standard for intent is, taken on its face, not possible to establish. To show the required intent, a defendant must convince a district court to “make a specific finding [that the inventors] knew that withheld information was material and [that] they made a deliberate decision to withhold it.” (See AMERICAN CALCAR, INC. V. AMERICAN HONDA MOTOR CO., INC. at p. 27.) This seems like a pretty rigorous standard to meet by clear and convincing evidence, but it is at some level impossible. It must be shown that an inventor knew—at the time he decided not to disclose a prior art reference—that the prior art reference was material. But the Federal Circuit also redefined “material,” which now must be (usually) “but-for” materiality: “prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.” (Therasense, p. 27; see also pp. 27-28 (“[I]n 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. In making this patentability determination, the court should apply the preponderance of the evidence standard and give claims their broadest reasonable construction.”).) Accordingly, a defendant must show that during prosecution an inventor knew of a prior art reference, knew that disclosing it would result in claims not being allowed, and made a deliberate decision to withhold it.

The problem, of course, is that one cannot know what the PTO is going to do with any particular piece of prior art ahead of time. Inventors and practitioners may have opinions about how they think the PTO will respond to a particular prior art reference, but they can never know. What the Federal Circuit likely meant, and how this standard will probably be applied in practice, is that to meet the intent standard it must be shown that an inventor believed (subjectively, one would presume) that a prior art reference would have resulted in claims not being allowed had the examiner known of it and deliberately decided to withhold it for that reason. Since this standard relies on the subjective view of the person(s) accused of inequitable conduct, it will be exceedingly difficult to establish.

Invalidity (Burden of Proof)

2011-06-24T08:51:00.000-07:00

CREATIVE COMPOUNDs, LLC. .V STARMARK LABORATORIES

"[W]e now hold that an accused infringer cannot obtain the benefit of the lower burden of proof that prevails in an interference proceeding simply by alleging, as a defense to infringement, that the asserted patent is invalid based upon a co-pending patent unless common claimed subject matter is first identified and an adjudication of priority is sought."

Derivation Defense

2011-06-24T08:48:00.000-07:00

CREATIVE COMPOUNDs, LLC. .V STARMARK LABORATORIES

In order to establish derivation, Creative was required to “prove both prior conception of the invention by another and communication of that conception to the patentee.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1334 (Fed. Cir. 2003).

Enhanced Damages

2011-06-13T08:19:00.000-07:00

SPECTRALYTICS, INC. V. CORDIS CORP.

"Seagate removed the presumption of willful infringement flowing from an infringer’s failure to exercise due care to avoid infringement, but Seagate did not change the application of the Read factors with respect to enhancement of damages when willful infringement under §285 is found. We thus vacate the district court’s denial of enhanced damages, and remand to the district court to redetermine whether enhanced damages are warranted under the guidance of Read, 970 F.2d at 826, that the 'paramount determination in deciding to grant enhancement and the amount thereof is the egregiousness of the defendant’s conduct based on all the facts and circumstances.'”

Analogous Prior Art

2011-06-13T08:18:00.001-07:00

IN RE KLEIN

"A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention."

Induced Infringement

2011-06-01T05:53:00.000-07:00

Global-Tech Appliances, Inc. v. SEB S. A.

“[W]e now hold that induced infringement under §271(b) requires knowledge that the induced acts constitute patent infringement.”

The knowledge requirement can be met by showing of willful blindness.

“While the Courts of Appeals articulate the doctrine of willful blindness in slightly different ways, all appear to agree on two basic requirements: (1) the defendant must subjectively believe that there is a high probability that a fact exists and (2) the defendant must take deliberate actions to avoid learning of that fact. We think these requirements give willful blindness an appropriately limited scope that surpasses recklessness and negligence. Under this formulation, a willfully blind defendant is one who takes deliberate actions to avoid confirming a high probability of wrongdoing and who can almost be said to have actually known the critical facts.”

“Taken together, this evidence was more than sufficient for a jury to find that Pentalpha subjectively believed there was a high probability that SEB’s fryer was patented, that Pentalpha took deliberate steps to avoid knowing that fact, and that it therefore willfully blinded itself to the infringing nature of Sunbeam’s sales.”

Attorney Fees Under Section 285

2011-03-16T09:33:00.000-07:00

OLD RELIABLE WHOLESALE, INC. V. CORNELL CORP.

“Absent misconduct in conduct of the litigation or in securing the patent, sanctions may be imposed against the patentee only if both (1) the litigation is brought in subjective bad faith, and (2) the litigation is objectively baseless.”

“The standard for establishing that a claim is ‘objectively baseless’ under section 285 is identical to the objective recklessness standard for enhanced damages and attorneys’ fees against an accused infringer for § 284 willful infringement actions under In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007). Thus, ‘objective baselessness’ depends not on the state of mind of the party against whom fees are sought, but instead on an objective assessment of the merits of the challenged claims and defenses.”

“Unless an argument or claim asserted in the course of litigation is so unreasonable that no reasonable litigant could believe it would succeed, it cannot be deemed objectively baseless for purposes of awarding attorney fees under section 285.”

MARCTEC, LLC. V. JOHNSON & JOHNSON

“A district court has discretion to award reasonable attorney fees to a prevailing party in a patent case if the court determines that the case is ‘exceptional.’”
“Absent litigation misconduct or misconduct in securing the patent, a district court can award attorney fees under § 285 only if the litigation is both: (1) brought in subjective bad faith; and (2) objectively baseless.”

“While it is clear that defeat of a litigation position, even on summary judgment, does not warrant an automatic finding that the suit was objectively baseless, here the record supports the district court’s finding that [the patentee] pursued objectively baseless infringement claims.”

“This finding [of litigation misconduct] provides a separate and independent basis for the court’s decision to award attorney fees. Indeed, it is well-established that litigation misconduct and unprofessional behavior may suffice, by themselves, to make a case exceptional under § 285.”

“A district court has inherent authority to impose sanctions in the form of reasonable expert fees in excess of what is provided for by statute. [Citing Takeda Chem. Indus., Ltd. v. Mylan Labs., Inc., 549 F.3d 1381, 1391 (Fed. Cir. 2008).] Use of this inherent authority is reserved for cases where the district court makes a finding of fraud or bad faith whereby the very temple of justice has been de-filed. Accordingly, not every case that qualifies as exceptional under § 285 will also qualify for sanctions under the court’s inherent power.”

False Marking

2011-03-15T09:01:00.000-07:00

The Federal Circuit giveth, the Federal Circuit taketh away. After creating a cottage industry of qui tam suits claiming false marking a little over a year ago, the Federal Circuit has tried to stop the bleeding by holding that "Fed. R. Civ. P. Rule 9(b)’s particularity requirement applies to false marking claims under § 292." IN RE BP LUBRICANTS USA INC. [ORDER] . Granting a writ of mandamus, the court noted that:

"[A] complaint must in the § 292 context provide some objective indication to reasonably infer that the defendant was aware that the patent expired."

"Because the relator’s complaint here provided only generalized allegations rather than specific underlying facts from which we can reasonably infer the requisite intent, the complaint failed to meet the requirements of Rule 9(b)."

such a requirement moves the law toward, though not completely to, the proposed amendments in Congress that would allow only "a person who has suffered a competitive injury" to bring a claim for false marking.

“A false marking claim requires an intent to deceive the public … and sounds in fraud….”

“A party alleging fraud must ‘set forth more than the neutral facts necessary to identify the transaction.’”

“Because these policy concerns apply equally to websites as to traditional articles of manufacture or design, and because websites may both embody intellectual property and contain identifying markings, this court holds that websites can qualify as unpatented articles within the scope of § 292.”

Graham's Crackers

2011-02-01T11:00:00.000-08:00

The first three Graham factors, the “primary” ones, are of no probative value concerning the issue of whether a claimed invention would have been obvious. They present a series of meaningless hoops to jump through for courts, parties, and juries, to the extent juries address the issue.

The Graham factors are: “[1] the scope and content of the prior art, [2] the differences between the prior art and the claims at issue, [3] the level of ordinary skill in the pertinent art, and [4] secondary considerations, otherwise known as objective indicia of nonobviousness.” Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1349 (Fed. Cir. 2009). The first and third of these factors are decidedly neutral, since discoveries in crowded, highly skilled fields can be just as obvious or non-obvious as discoveries in sparse, low skilled fields. The level of ordinary skill in the pertinent art is inherent equivocal. A high level of skill suggests, on the one hand, that any invention should be deemed more obvious because these highly skilled folks would have been able to combine prior art references but at the same time suggests that if an invention was obvious then it should have been invented earlier by one of these highly skilled folks in the field. Concerning the scope and content of the prior art, the definition of the field of an invention is itself precarious, since an invention is necessarily new and may well span more than one “field.” Moreover, the scope and content of the prior art is subsumed into the second factor. So those two factors are meaningless. [Update: See CELSIS IN VITRO, INC. V. CELLZDIRECT, INC. in which the majority (split opinion of course) notes that the crowded field, in this case, favored a finding of nonobviousness: "As to the scope and content of the prior art, the district court correctly emphasized and found based on the preliminary record that the art was a crowded field for many years and yet there was not one reference to [an aspect of the invention at issue]."]

The second factor (differences between the invention and the prior art) seems at first blush like the key Graham factor, but it does nothing but restate the statutory definition of obviousness, which simply states that an invention is obvious if the differences between it and the prior art would have been obvious. Helpful. Indeed, this factor is neutral as well. Sometimes a small change from the prior art can result in a major breakthrough, and sometimes it can be just an incremental, obvious step taken in the ordinary course of technological development. In the case of the electric light bulb, for example, the difference between the design that was commercially viable and the prior art was very small. Thus, the three main Graham factors have little bearing on the ultimate question, which is presumably whether an invention would have been a no brainer and should not result in a term of monopoly for the person who first filed an application for a novel combination.

The last Graham factor, secondary considerations, is the only Graham factor that has any meaningful relevance for determining whether an invention was a good one. In practice, however, these are often given short shrift by the Federal Circuit and the PTO. These considerations, such as long-felt need, industry acceptance, failure of others, copying and unexpected results, all provide at least some evidence that the invention added something useful to the existing state of knowledge.

As a whole, the Graham analysis never directly seeks to determine whether the invention was the result of a good idea. Only after somehow concluding that an invention would have been “obvious” based on the first three [non-]factors does a court even turn to the most pertinent available objective evidence for that issue.

The bottom line is this: Obviousness is completely unpredictable and has been for many years. The determination is in the end at the whim of whatever three judge panel of the Federal Circuit is drawn. The test used for this “question of law” has no analytical rigor. Stripped of the façade of its boilerplate factors, it boils down to the opinion of the court. That makes obviousness both unpredictable and fundamentally unfair. It is time to toss Graham out. And until the courts can devise a legal framework that produces both fair and predictable results, obviousness should be left to juries to decide.

The Problem to be Solved Problem

2011-02-01T10:59:00.000-08:00

“We have consistently stated that courts may find a motivation to combine prior art references in the nature of the problem to be solved, and that this form of motivation to combine evidence is particularly relevant with simpler mechanical technologies.” (Tokai v. Easton Enterprises (Fed. Cir. 2011).) An obviousness analysis that hinges on the identity of the problem solved by the invention at issue is necessarily fraught with hindsight bias. One cannot judge the worthiness of an invention by assuming the invention exists and then asking if it would have been obvious to invent that invention. That is essentially what the Federal Circuit is condoning with its reliance on the nature of the problem to be solved as the source of motivation to combine prior art references. The invention must be known before the problem to be solved can even be identified (unless the problem has not been solved, in which case there would be no invention). Often, identifying the problem to be solved is the hard part—it can be the key step on the road to invention.

What the court is saying in these problem-to-be-solved-as-motivation cases is that if in hindsight it looks like it would have been easy to combine a couple of simple mechanical devices to get the invention before the court, then no patent for you, regardless of the fact that no one else had thought to make such a combination despite the fact that the references were known and regardless of any objective indicia of non-obviousness, such as the fact that after the inventor first put the combination it became very popular. That kind of stuff won’t prevent summary judgment.

In a dissenting opinion, Judge Newman explained the problems with the current state of obviousness analysis as follows: “The determination of obviousness is not whether a person could, with full knowledge of the patented device, reproduce it from prior art or known principles. The question is whether it would have been obvious, without knowledge of the patentee’s achievement, to produce the same thing that the patentee produced. This judgment must be made without the benefit of hindsight. It is improper to take concepts from other devices and change them in light of the now-known template of the patented device, without some direction in the prior art that would render it obvious to do so.” (Tokai v. Easton Enterprises (Fed. Cir. 2011).)

Relying on the problem to be solved—the problem solved by the claimed invention—as the reason to combine references to get to that claimed invention inherently results in hindsight bias. That standard is the problem that needs to be solved.

Use of Invention

2011-01-20T08:56:00.000-08:00

CENTILLION DATA SYSTEMS V. QWEST COMMUNICATIONS INTERNATIONAL

We hold that to “use” a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it.
We agree that direct infringement by “use” of a system claim “requires a party . . . to use each and every . . . element of a claimed [system].” In order to “put the system into service,” the end user must be using all portions of the claimed invention.
By causing the system as a whole to perform this processing and obtaining the benefit of the result, the customer has “used” the system under § 271(a). It makes no difference that the back-end processing is physically possessed by [another party].

Transfer

2011-01-05T08:30:00.000-08:00

IN RE MICROSOFT CORP. [ORDER]

"A motion to transfer under § 1404(a) calls upon the trial court to weigh a number of case-specific factors relating to the convenience of the parties and witnesses, and the proper administration of justice, based on the individualized facts on record."

"In In re Zimmer Holdings, Inc., 609 F.3d 1378 (Fed. Cir. 2010), we held that the transfer of documents to a com-pany’s offices in anticipation of litigation rather than to litigation counsel was a distinction without a difference for purposes of a § 1404(a) analysis. Id. at 1381. We further explained that, similar to Allvoice’s offices here, the offices in Zimmer staffed no employees, were recent, ephemeral, and a construct for litigation and appeared to exist for no other purpose than to manipulate venue. Id. The only added wrinkle is that Allvoice took the extra step of incorporating under the laws of Texas sixteen days before filing suit. But that effort is no more meaningful, and no less in anticipation of litigation, than the others we reject."
Granting petition for a writ of mandamus and ordering transfer. See also In re Nintendo Co., 589 F.3d 1194 (Fed. Cir. 2009); In re Hoff-mann-La Roche Inc., 587 F.3d 1333 (Fed. Cir. 2009); In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009); In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008).

Conception of an Invention

2010-10-13T10:05:00.000-07:00

SOLVAY S.A. V. HONEYWELL INTERNATIONAL, INC.

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.

Infringement

2010-08-05T08:20:00.000-07:00

CREATIVE COMPOUNDs, LLC. .V STARMARK LABORATORIES

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.

ADAMS RESPIRATORY THERAPEUTICS, INC. V. PERRIGO CO.

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.

GENERAL PROTECHT GROUP, INC. V. INTERNATIONAL TRADE COMMISSION

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.”

Prosecution History Estoppel

2010-08-04T08:15:00.000-07:00

INTERVERT INC. V. MERIAL LTD.

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.

Provisional Reference Date

2010-07-07T08:17:00.000-07:00

IN RE GIACOMINI

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

Claim Construction

2010-06-02T09:50:00.000-07:00

HAEMONETICS, CORP. V. BAXTER HEALTHCARE CORP.

“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.”

GENERAL PROTECHT GROUP, INC. V. INTERNATIONAL TRADE COMMISSION

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

Equitable Estoppel

2010-05-24T10:36:00.000-07:00

ASPEX EYEWEAR INC. V. CLARITI EYEWEAR, INC.

“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”

Standing to Sue

2010-05-14T10:00:00.000-07:00

WIAV SOLUTIONS LLC V. MOTOROLA, INC.

“[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.”

ALFRED E. MANN FOUNDATION FOR SCIENTIFIC RESEARCH V. COCHLEAR CORP.

“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.”

Obviousness

2010-05-05T10:04:00.000-07:00

ROLLS-ROYCE PLC V. UNITED TECHNOLOGIES CORP.

“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.”

TRIMED, INC. V. STRYKER CORP.

"Merely saying that an invention is a logical, commonsense solution to a known problem does not make it so."

TOKAI V. EASTON ENTERPRISES

“[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))

Inequitable Conduct

2010-04-27T09:13:00.000-07:00

THERASENSE, INC. V. BECTON, DICKINSON AND CO. (a new stndard)

"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."

AMERICAN CALCAR, INC. V. AMERICAN HONDA MOTOR CO., INC.

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.

OPTIUM CORP. V. EMCORE CORP.

“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.”

AVID IDENTIFICATION SYS. V. CRYSTAL IMPORT CORP.

“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.”

ASPEX EYEWEAR INC. V. CLARITI EYEWEAR, INC.

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

Enablement

2010-04-26T10:24:00.000-07:00

ALZA CORP. V. ANDRAX PHARMACEUTICALS, LLC.

“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).

Rule Against Recapture

2010-04-13T09:01:00.000-07:00

MBO LABORATORIES V. BECTON, DICKINSON & CO.

“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.”

AIA ENGINEERING LTD. V. MAGOTTEAUX INTERNATIONAL S/A

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

2010-04-13T08:56:00.000-07:00

AKAMAI TECHNOLOGIES, INC. V. LIMELIGHT NETWORKS, INC.

"While control or direction is a consideration, as is the extent to which instructions, if any, may be provided, what is essential is not merely the exercise of control or the providing of instructions, but whether the relationship between the parties is such that acts of one may be attributed to the other.
"In assessing infringement based on the actions of joint parties, it is not enough to determine for whose the actions serve, for in any relationship there may be benefits that inure in some respects to both parties. This court therefore holds as a matter of Federal Circuit law that there can only be joint infringement when there is an agency relationship between the parties who perform the method steps or when one party is contractually obligated to the other to perform the steps."
"[T]here is no indication that an agency relationship arises when one party simply provides direction, no matter how explicit, to another party. All the elements of an agency relationship must be present."

GOLDEN HOUR DATA SYSTEMS, INC. V. EMSCHARTS, INC.

“Where the combined actions of multiple parties are alleged to infringe process claims, the patent holder must prove that one party exercised ‘control or direction’ over the entire process such that all steps of the process can be attributed to the controlling party, i.e., the ‘mastermind.’”

SIRF TECHNOLOGY V. ITC

"As they do not require that any of the steps be performed here by the customers or the end users, and the disputed steps are not in fact performed by third parties, we conclude that SiRF directly infringes."
See also Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1329 (Fed. Cir. 2008) (discussing joint infringement).

But see CENTILLION DATA SYSTEMS V. QWEST COMMUNICATIONS INTERNATIONAL (discussing definition of "use")

Joint Inventorship

2010-04-07T08:32:00.000-07:00

VANDERBILT UNIV. V. ICOS CORP. [REVISED]

"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."

Declaratory Judgment Jurisdiction

2010-04-01T10:42:00.000-07:00

ARRIS GROUP, INC. V. BRITISH TELECOMMUNICATIONS PLC

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….

INNOVATIVE THERAPIES, INC. V. KINETIC CONCEPTS, LTD.

"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."

ABB INC. V. COOPER IND., LLC.

“[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.”

CREATIVE COMPOUNDs, LLC. .V STARMARK LABORATORIES

"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."

Preamble

2010-04-01T10:41:00.000-07:00

AMERICAN MEDICAL SYSTEMS, INC. V. BIOLITEC, INC.

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

HEARING COMPONENTS, INC. V. SHURE, INC.

"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."

Indefiniteness

2010-04-01T10:32:00.000-07:00

WELLMAN, INC. V. EASTMAN CHEMICAL CO.

"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."

HAEMONETICS, CORP. V. BAXTER HEALTHCARE CORP.

“[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.”

HEARING COMPONENTS, INC. V. SHURE, INC.

"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."

POWER-ONE, INC. V. ARTESYN TECHNOLOGIES, INC.

"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."

ENZO BIOCHEM, INC. V. APPLERA CORP.

“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.”

SEB v. Pentalpha

2010-02-05T09:48:00.000-08:00

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.)

Therasense v. Becton (2008-1511)

2010-01-25T14:44:00.000-08:00

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

2010-01-25T12:56:00.000-08:00

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)

2010-01-25T08:49:00.000-08:00

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.)

Schindler Elevator v. Otis Elevator

2010-01-15T10:09:00.000-08:00

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.”

The Forest Group v. Bon Tool Company

2009-12-28T10:51:00.000-08:00

35 U.S.C. § 292 prohibits falsely marking a product with a patent number or “patent pending.” It allows anyone to sue to enforce this provision and split the fine with the U.S. The maximum fine is “not more than $ 500 for every such offense.”

At issue in FOREST GROUP V. BON TOOL was whether that maximum fine applied on a per “decision to mark” basis or on a per article basis. The Federal Circuit concluded that it “requires courts to impose penalties for false marking on a per article basis.” (p. 14.) This of course has the potential to result in substantial penalties, and to provide an incentive for “the possible rise of ‘marking trolls’ who bring litigation purely for personal gain.” (p. 12.) However, the court also noted that the $500 figure was a maximum and so “[i]n the case of inexpensive mass-produced articles, a court has the discretion to determine that a fraction of a penny per article is a proper penalty.” (p. 13.) Moreover, the statute explicitly allows for such suits and the court mentioned several policy reasons for discouraging improper marking:

Acts of false marking deter innovation and stifle competition in the marketplace.
False marks may also deter scientific research when an inventor sees a mark and decides to forego continued research to avoid possible infringement.
False marking can also cause unnecessary investment in design around or costs incurred to analyze the validity or enforceability of a patent whose number has been marked upon a product with which a competitor would like to compete. (p. 11.)

Because “[t]hese injuries occur each time an article is falsely marked,” the court determined the penalty should be applied per product in the marketplace and qui tam suits should not be discouraged.

The take away: Double check your products to make sure they aren't being marked with expired patents.

For a discussion on standing, see STAUFFER V. BROOKS BROTHERS, INC.

i4i v. Microsoft

2009-12-23T10:50:00.000-08:00

This case involved an invention for editing custom XML, a markup language, in which the “improvement stems from storing a document’s content and metacodes separately.” The jury found claims infringed and not invalid and awarded $200 million. The district court added $40 million in enhanced damages plus a permanent injunction going forward. Below are excerpts concerning some of issues considered.

Claim Construction

“Because the claims themselves do not use the word ‘file’ and the specification discloses embodiments where the storage format is not a file, we conclude that ‘distinct’ does not require storage in separate files.” “In evaluating whether a patentee has disavowed claim scope, context matters.” “The statements Microsoft now plucks from the prosecution history do not ‘clear[ly] and unmistakabl[y] disavow’ storage means that are not files.” (p. 9.)

“[N]ot every benefit flowing from an invention is a claim limitation.” (p. 10)

Permissive Language Alert. “The specification’s permissive language, ‘could be edited,’ ‘can be created,’ and ‘ability to work,’ does not clearly disclaim systems lacking these benefits.” (p. 11.) As such, there were “no statements that unequivocally narrow the claims.” (p. 11.)

Review of Obviousness Limited Without a JMOL. “The extent to which we may review the jury’s implicit factual findings depends on whether a pre-verdict JMOL was filed on obviousness. In this case, Microsoft has waived its right to challenge the factual findings underlying the jury’s implicit obviousness verdict because it did not file a pre-verdict JMOL on obviousness for [certain prior art] references. … [A] party must file a pre-verdict JMOL motion on all theories, and with respect to all prior art references, that it wishes to challenge with a post-verdict JMOL. Microsoft’s pre-verdict JMOL on anticipation … was insufficient to preserve its right to post-verdict JMOL on a different theory (obviousness), or on different prior art …. Accordingly, we do not consider whether the evidence presented at trial was legally sufficient to support the jury’s verdict. Our review is limited to determining whether the district court’s legal conclusion of nonobviousness was correct, based on the presumed factual findings.” (p. 14.)

Corroboration. “[W]e hold that corroboration was not required in this instance, where the testimony was offered in response to a claim of anticipation and pertained to whether the prior art practiced the claimed invention.” (p. 18.) The court was distinguishing the corroboration requirement that applies when “any witness whose testimony alone is asserted to invalidate a patent.” (p. 18.)

Contributory Infringement. “In assessing whether an asserted noninfringing use was ‘substantial,’ the jury was allowed to consider not only the use’s frequency, but also the use’s practicality, the invention’s intended purpose, and the intended market.” (p. 25.)

Damages: Review Limited Because Microsoft Did Not File Pre-Verdict JMOL. “Although Microsoft now objects to the size of the damages award, we cannot reach that question because Microsoft did not file a pre-verdict JMOL on damages.” (p. 36.) The court would not consider whether the damages award was excessive because “Microsoft waived its ability to have us decide that question by failing to file a pre-verdict JMOL on damages. Fed. R. Civ. P. 50(a), (b).” (p. 36-37.) “Instead of the more searching review permitted under Rule 50(b), we are constrained to review the verdict under the much narrower standard applied to denials of new trial motions. This standard is highly deferential: we may set aside a damages award and remand for a new trial only upon a clear showing of excessiveness. To be excessive, the award must exceed the maximum amount calculable from the evidence.” (p. 37.) Since it didn’t, the award was affirmed, though the court suggested it might have reached a different result under the other standard of review, sufficiency of the evidence.

Permanent Injunction

Past Harm Is Relevant to Irreparable Harm. “Although injunctions are tools for prospective relief designed to alleviate future harm, by its terms the first eBay factor looks, in part, at what has already occurred.” (p. 43)

Remedies at Law. “Difficulty in estimating monetary damages is evidence that remedies at law are inadequate.” (p. 44.) Microsoft took a large percent of the market and i4i had to change its business model.

Public Interest Satisfied by Narrow Scope. “The scope of this injunction is narrow, however. It applies only to users who purchase or license Word after the date the injunction takes effect. Users who purchase or license Word before the injunction’s effective date may continue using Word’s custom XML editor, and receiving technical support.” (p. 42.) “The injunction’s narrow scope substantially mitigates the negative effects on the public, practically and economically. By excluding users who purchased or licensed infringing Word products before the injunction’s effective date, the injunction greatly minimizes adverse effects on the public.” (p. 45.)

Date Injunction Begins. The court changed the effective date of the injunction based on the evidence presented to the district court. But since this change was applied to the district court’s order, the end result is that the injunction will take effect in a few weeks of this decision.

IN RE NINTENDO

2009-12-17T11:08:00.000-08:00

Groundhog Writ. The Federal Circuit has granted a petition for a writ of mandamus, ordering a case to be transferred out of the Eastern District of Texas to another venue after the district court had denied a motion to transfer. “The writ of mandamus is available in extraordinary situations to correct a clear abuse of discretion or usurpation of judicial power.” (p. 3.) However, it has been used rather frequently recently to get cases out of the Eastern District of Texas. As in the other recent transfer cases, there was no real connection between the case and Texas. Further, the Federal Circuit noted that the district court gave too much emphasis on the plaintiff’s choice of venue and not enough emphasis on local interest and on the location of sources of proof and witnesses.

Automated Merchandising Systems v. Crane

2009-12-16T08:58:00.000-08:00

This non-precedential decision discusses the standards for preliminary injunctions, in particular the requirements for showing irreparable harm, avoiding a finding of likelihood of success by making a case for invalidity, and the implications of a reexamination proceeding for seeking a preliminary injunction.

1. Irreparable Harm

The court discussed what is required to demonstrate irreparable harm, which is harm that cannot be compensated via monetary damages. Evidence of lost sales, by itself, is presumed to be compensable by monetary damages and thus does not provide evidence of irreparable harm. The court stated that, in light of eBay, the “burden is now on the patentee to demonstrate that its potential losses cannot be compensated by monetary damages.” (p. 6.) Loss of market share must be shown to be non-compensable by monetary damages. Similarly, price erosion “might support a finding of irreparable harm sufficient to warrant a preliminary injunction” if it could be shown that prices could fall enough to drive the plaintiff out of the market. (p. 7.)

2. Likelihood of Success

The district court improperly shifted the burden from the plaintiff (to show a likelihood of success) to the defendant (to show that the plaintiff is unlikely to success on the merits.) The defendant’s argument against a preliminary injunction was based on an invalidity claim. The court acknowledged that “it may be difficult to determine precisely how much of an invalidity case Crane needs to present at this preliminary stage” because it does in fact have the “burden at trial of proving invalidity by clear and convincing evidence.” (p. 8.) Nonetheless, the district court did not sufficiently analyze the defendant’s invalidity argument, and so the Federal Circuit could not agree with its conclusion.

3. Preliminary Injunctions and Stays Due to Reexamination

The court explained that, in almost all circumstances, it would be improper to both grant a preliminary injunction and a stay pending reexamination. “[T]he district court ordinarily should not grant both a preliminary injunction and a stay. This is because a stay pending reexamination is appropriate only if there is a substantial issue of patentability raised in the reexamination proceeding, while the injunction against the accused infringer is appropriate only if there is no substantial issue of patentability. Because it logically seems that there cannot simultaneously be a substantial issue of patentability and no substantial issue of patentability, stays pending reexamination are typically inappropriate in cases in which preliminary injunctions are appropriate.” (p. 10.)

Intellectual Science v. Sony Electronics

2009-12-15T09:05:00.000-08:00

The issue on appeal was whether the patentee had provided sufficient evidence through its expert’s declaration to survive summary judgment of non-infringement. The patent was directed toward an “apparatus for reading optical discs in a computer that reduces the role of magnetic disk drives.” The defendants moved for summary judgment (before claim construction) based on the insufficiency of the patentee’s evidence for infringement. In particular, there was no evidence in the record pointing to specific structures in the accused devices that met the claimed “data transmission means.” Therefore, summary judgment of non-infringement was affirmed.

After reviewing the expert declaration, the court found that “it does not sufficiently identify the structural elements of the claimed ‘data transmitting means.’” (p. 8.) The expert declaration also failed to explain how one of skill in the art would recognize how the cited components were infringing. (p. 10.) To present a triable issue of fact on infringement, the patentee must provide at least a “clear identification of the claimed structure or its equivalent in the accused devices.” (p. 14.)

The court included additional statements about the sufficiency of expert opinions in the infringement context: “An expert’s unsupported conclusion on the ultimate issue of infringement will not alone create a genuine issue of material fact.” (p. 8.) “To satisfy the summary judgment standard, a patentee’s expert must set forth the factual foundation for his infringement opinion in sufficient detail for the court to be certain that features of the accused product would support a finding of infringement….” (p. 7-8.)

Source Search Technologies v. LendingTree

2009-12-07T11:21:00.000-08:00

Obviousness. The claims at issue in this case involved “a computerized procurement service for matching potential buyers with potential vendors over a network.” One limitation, as construed, required that the system return from potential sellers “quotes” that included “price and other terms of a particular transaction in sufficient detail to constitute an offer capable of acceptance.” (p. 12.) Because there were at least factual issues about whether the prior art disclosed the use of such “quotes,” the district court’s grant of summary judgment of obviousness was vacated.

Infringement. The district court had also found that the accused system infringed. This finding was also vacated for a related reason—there were fact issues regarding whether the accused system returned “quotes” as construed (capable of acceptance) from potential buyers. (p. 19.)

Collateral estoppel. The patentee contended that the defendant should not be able to argue that its “quotes” were non-infringing based on positions it had taken in another litigation. The court agreed with the district court that collateral estoppel was not appropriate because the prior issue involved “an unrelated patent, with different asserted claims, and dissimilar claim constructions.” (p. 17.)

Indefiniteness. The defendant also argued that the claims were indefinite because a person of skill could not differentiate between the claimed “standard” and unclaimed non-standard goods and services. While noting that completely subjective claim terms were improper, the court rejected this argument, finding that a person of skill could determine what was standard once a market was chosen. “To hold otherwise would require the patent to list every possible good or service. This court does not load the indefiniteness requirement with this unreasonable baggage. Although at times difficult to determine the bounds of a “standard” product or service, a person having ordinary skill in the art will possess an understanding of the system that will supply an objective definition to the various markets and applications of the system.” (p. 21.)

Tyco Healthcare v. Ethicon Endo-Surgery

2009-12-07T11:16:00.000-08:00

The district court dismissed without prejudice this patent infringement case because the plaintiff failed to prove it had ownership of the patents and therefore standing to sue. The defendant cross-appealed, contending that the dismissal should have been without prejudice. The Federal Circuit affirmed.

The standing issue turned on a contractual provision in an agreement that assigned certain patents to the plaintiff, but excluded patents that were “related to pending litigation.” Because the plaintiff failed to provide evidence regarding any pending litigation, it failed to meet its burden regarding standing.

On the with/without prejudice issue, the court noted that dismissal for lack of standing is “ordinarily” without prejudice and found no abuse of discretion by the district court. It is also worth noting that this issue was not raised until trial, and the court noted that the work done for the case could be used in a subsequent proceeding.

Encyclopaedia Britannica v. Alpine Electronics

2009-12-04T10:50:00.000-08:00

This non-precedential opinion discusses the standards for the specificity of disclosure for functions carried out on computers. The court stated that, for means-plus-function claims, simply disclosing a general computer was not sufficient. The “corresponding structure for such claims is the algorithm disclosed in the specification. …If the algorithm is not adequately disclosed in the specification, the claim is invalid for indefiniteness.” (p. 6.)

The patentee made three arguments that were all rejected. First, it argued that the specification implicitly discloses a class of algorithms corresponding to the recited function to a person of skill in the art. This was rejected because it the “understanding of one of skill in the art does not relieve the patentee of the duty to disclose sufficient structure to support means-plus-
function claim terms.” (p. 7-8 (citing Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d 710, 719 (Fed. Cir. 2008).)

Second, it argued that the specification discloses a one-step algorithm for the recited function. This was rejected because the “purported ‘one-step’ algorithm … is not an algorithm at all. Rather, it is simply a recitation of the claimed function.” (p. 9.)

And finally, it argued that it “need not disclose an algorithm where the computer function being performed is well known.” This was rejected because, regardless of the simplicity of the algorithm, “when a means-plus-function limitation is a computer programmed with software to carry out the claimed function, a recitation of the corresponding algorithm is required to provide sufficient disclosure of structure under § 112 ¶ 6 to avoid indefiniteness under § 112 ¶ 2.” (p. 10.)

Hewlett-Packard v. Acceleron

2009-12-04T09:58:00.000-08:00

The Federal Circuit reversed a dismissal for lack of declaratory judgment jurisdiction. This was a typical letter writing dance case, but the court recognized that its decision represented a shift from past cases, and also that declaratory judgment cases can be tricky. “[T]here is no bright-line rule for distinguishing those cases that satisfy the actual case-or-controversy requirement from those that do not. Our decision in this case undoubtedly marks a shift from past declaratory judgment cases.” (p. 9.)

The opinion included excerpts from the exchanged letters, which showed both parties were quite cognizant of the declaratory judgment issue. While noting that “MedImmune may have lowered the bar for determining declaratory judgment jurisdiction in all patent cases,” it made clear that more is required than just any communication regarding a patent: “a communication from a patent owner to another party, merely identifying its patent and the other party’s product line, without more, cannot establish adverse legal interests between the parties, let alone the existence of a ‘definite and concrete’ dispute. More is required to establish declaratory judgment jurisdiction.” (p. 5.)

With no history of litigation, the determining factor here appeared to revolve in large part around the patent owner’s status as a patent holding company. Relevant facts included that “the receipt of such correspondence from a non-competitor patent holding company . . . may invoke a different reaction than would a meet-and-discuss inquiry by a competitor, presumably with intellectual property of its own to place on the bargaining table. Under the totality of the circumstances, therefore, it was not unreasonable for HP to interpret Acceleron’s letters as implicitly asserting its rights under the [] patent.” In addition, the court “observe[d] that Acceleron is solely a licensing entity, and without enforcement it receives no benefits from its patents….” (p. 8.)

Other factors that played a role were that the patent owner asserted the patent as “relevant” to a specific product line, imposed a short deadline for a response, insisted the other party not file suit, and refused a standstill agreement. (p. 7.) The court also noted that “it is the objective words and actions of the patentee that are controlling,” not its actual state of mind. (p. 7.)

Ultimax Cement v. CTS Cement

2009-12-03T12:13:00.000-08:00

This case involves patents for rapid-hardening, high-strength cement. A few of the issues are discussed below.

Claim Construction
The Federal Circuit reversed the district court’s claim construction of “soluble CaSO4 anhydride” in part because it relied too heavily on a single dictionary definition divorced from the context of the claims and the specification. “[T]he [district] court erroneously relied on expert testimony and a single dictionary definition to the exclusion of other dictionary definitions and, most importantly, the context in which the term was used within the claim and the specification.” (p. 9.) The issue was whether “soluble CaSO4 anhydride” meant “a compound formed from an acid by removal of water” as the district court held or meant “soluble anhydrous calcium sulfate.” Because there was ambiguity in the dictionary definitions regarding what anhydride could mean, “the context must define what compound has had water removed. Here it is calcium sulfate, not an acid.” (p. 10.)

Laches
“An infringer does not escape liability merely by infringing in secret.” (p. 15.) Therefore, summary judgment of laches was not appropriate even though the accused product was available for 12 years because the patentee could not adequately test it until discovery. While 12 years is a long time, when “a claim limitation whose presence is undetectable in a finished product, it is reasonable that [patentee] might not have known or been able to find out whether [a product] infringed.” (p. 15.) Thus, there were genuine issues of fact, including whether the patentee had fulfilled its duty by hiring a private investigator.

Indefiniteness
“Merely claiming broadly does not render a claim insolubly ambiguous, nor does it prevent the public from understanding the scope of the patent.” (p. 19.) Thus, the fact that one formula in the claims may have covered 5000 variations did not render them indefinite because a person could fairly easily determine whether a given compound fell within the literal scope of the claims.

Correction of Typo
The district court refused to correct a typo (insertion of a comma) because, although the error was apparent to one of skill in the art, it was not “clear on the face of the patent.” The Federal Circuit clarified that such corrections can be made “if the correction is not subject to reasonable debate to one of ordinary skill in the art, namely, through claim language and the specification, and the prosecution history does not suggest a different interpretation, then a court can correct an obvious typographical error.” (p. 21.)

Perfect Web v. Infousa

2009-12-02T11:41:00.000-08:00

Asserted claims for a patent for “managing bulk e-mail distribution to groups of targeted consumers” were found to be obvious on summary judgment and the Federal Circuit affirmed (and did not address an alternative holding that the claims were directed to unpatentable subject matter under section 101.) The claims involved sending e-mail messages in bunches and continuing to send new batches out until a certain number of messages were successfully received. The parties agreed that the first three steps of the four step method were known, so the issue was whether the fourth step—repeating the first three until a quota was met—would have been obvious.

An initial issue, which the court discussed at some length, was what kind of evidence was required for “common sense.” Relying on KSR, it found that the common sense available need not be shown in a reference or through expert testimony: “We therefore hold that while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” (p. 9.) However, for summary judgment, “to invoke ‘common sense’ or any other basis for extrapolating from prior art to a conclusion of obviousness, a district court must articulate its reasoning with sufficient clarity for review.” (p. 10.)

Applying this standard to the case at hand, the court found that the district court adequately explained its reasoning in concluding that common sense would have rendered the claims obvious. It found that the “last step, and the claim as a whole, simply recites repetition of a known procedure until success is achieved.” (p. 10.) Further, because of the nature of the claims, “[n]o expert opinion is required to appreciate the potential value to persons of such skill in this art of repeating [the first three] steps.” (p. 10.)

The patentee’s argument that the patent met a long-felt need were rejected, in part because it “provided no evidence to explain how long this need was felt, or when the problem first arose.” (p. 15.)

The court also found that the claimed solution would have been obvious to try because the evidence showed that there were “at most a few potential solutions for this problem at the time” of the invention. (p. 12.)

In Re Hoffmann-La Roche Inc.

2009-12-02T10:51:00.000-08:00

The Federal Circuit has once again granted a petition for writ of mandamus and directed a district court (in the Eastern District of Texas) to transfer a patent case to another district. The court had taken basically the same action in similar circumstances recently in both In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009) and In re TS Tech USA Corp., 551 .3d 1315, 1322 (Fed. Cir. 2008).

Novartis, a California company, brought a patent infringement suit against defendants with facilities primarily in North Carolina (where the accused product was developed). They moved to transfer the case to the Eastern District of North Carolina and the motion was denied. The Federal Circuit found that there was a “there is a stark contrast in relevance, convenience, and fairness between the two venues” and concluded that the district court’s denial was an abuse of discretion under 5th Circuit law. (p. 5.) Applying these factors, the court found that there was virtually no connection to the Eastern District of Texas. It gave no weight to a “tactic” in which documents related to the patent were transferred to plaintiff’s counsel in Texas. (p. 5-6.)

The court found that “the Eastern District of North Carolina’s local interest in this case remains strong because the cause of action calls into question the work and reputation of several individuals residing in or near that district and who presumably conduct business in that community” and that this interest is “self-evident.” (p. 5, 6.) In contrast, the court again noted that “the sale of an accused product offered nationwide does not give rise to a substantial interest in any single venue.” (p. 8.)

Iovate Health Sciences v. Bio-Engineered Supplements

2009-11-19T09:24:00.000-08:00

The court affirmed the district court’s finding of anticipation of method claims directed toward “the use of nutritional supplements containing [certain ingredients] to enhance muscle performance or recovery from fatigue.” (p. 3.) These claims were anticipated by advertisements for nutritional supplements in a magazine that were published before the critical date.

The claims required administering a composition of a combination of supplements. The ad disclosed this combination. The patentee sought to avoid anticipation by arguing that the ad did not disclose administering an effective amount and did not disclose anything specific about enhancing muscle performance or recovering from fatigue as recited in the preamble. The court rejected these arguments, noting that the claims do not require an effective amount and that the ad’s disclosure general concepts of muscle “recuperation” and “post-workout recovery” encompass performance and fatigue.

The patentee also argued that the ads might not be enabling because the ads “lack any guidance on appropriate ingredient dosages.” (p. 9-10.) However, a person of ordinary skill in the art “would have been able to determine such an amount based on the ad and the knowledge in the art at the time.” The patent specification itself disclosed “numerous pre-1996 publications that teach acceptable clinical dosages of the” claimed ingredients. (p. 10.)

The court decided the case based on the ad being a printed publication. The majority opinion did not consider use or on sale grounds were also sufficient for anticipation. (See p. 5 (“While the district court’s decision and the parties’ arguments discuss three of the grounds listed in § 102(b)—printed publication, public use, and on sale—we need affirm the district court’s decision on only a single ground….”).) In a concurring opinion, Judge Mayer noted that the “the products were on sale more than one year before the critical date.” Assuming this is a reference to the ads, then the claimed method would have to have been on sale. See NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1320 (Fed. Cir. 2005) (“a method claim may be invalid if an offer to perform the method was made prior to the critical date”); see also Scaltech, Inc. v. Retec/Tetra, LLC, 269 F.3d 1321, 1328 (Fed. Cir. 2001) ("The on sale bar rule applies to the sale of an 'invention, 'and in this case, the invention was a process, as permitted by § 101. As a result, the process involved in this case is subject to § 102(b)."); Plumtree Software, Inc. v. Datamize, LLC, 473 F.3d 1152, 1162 (Fed. Cir. 2006). While it seems clear that the printed publication taught the claimed method, whether that method was on sale is a more difficult question.

Bilski v. Kappos--Oral Argument

2009-11-10T16:42:00.000-08:00

During oral argument for the Bilski case, the justices seemed to be seeking guidance on how to put forth a rule that excludes patents for business methods of the sort at issue but leaves open the possibility that a legitimate invention would be patentable even if it fell outside of the Federal Circuit’s machine-or-transformation test. In other words, how can patent-eligible subject matter be reigned in from the extremes the Court fears it can reach (horse training, teaching antitrust law, the alphabet) without cutting off some great invention of the future that does not rely on any machine or a transformation of matter? (E.g., JUSTICE SOTOMAYOR: “So help us with a test that doesn't go to the extreme the Federal Circuit did, which is to preclude any other items, something we held open explicitly in two other cases, so we would have to backtrack and say now we are ruling that we were wrong, and still get at something like this?”)

Another concern of the Court seemed to be the loophole in the machine test that was left unresolved in the proceedings below—whether simply having the otherwise ineligible process performed on a computer lifts an invention into patent eligibility. (E.g., CHIEF JUSTICE ROBERTS: “If you develop a process that says look to the historical averages of oil consumption over a certain period and divide it by 2, that process would not be patentable. But if you say use a calculator, then it -- then it is?”)

The Court seemed to, despite its efforts, lapse into conflating the issues of patent eligible subject matter and patentability based on novelty and nonobviousness, as some of the examples posited suggested. (E.g., JUSTICE KENNEDY: “But you know, the insurance industry -- the insurance business, as we know it, really began in England in 1680, when they discovered differential calculus, and they had expectancy and actuarial tables, actuarial for life, expectancy for shipping, and this really created a whole new industry. In your view, I think, clearly those would be patentable, the -- the explanation of how to compile an actuarial table and -- and apply it to risk. That certainly would be patentable under your view, and it's -- it's difficult for me to think that Congress would want to -- would have wanted to give only one person the capacity to issue insurance.”)

The Court seemed to be legitimately grappling with the issues, but one firm statement stood out: JUSTICE SOTOMAYOR: “No ruling in this case is going to change State Street.” It will be interesting to see if that holds true.

Imation v. Philips

2009-11-03T09:30:00.000-08:00

Imation brought a declaratory judgment action seeking to have two of its subsidiaries declared to be licensed to a patent under its agreement with Philips. The license agreement, between Philips and what became Imation, granted a license to Imation and its subsidiaries. Imation acquired the two subsidiaries in question after the expiration date of the agreement. The issues were whether they qualified as subsidiaries under the agreement and whether the granting of the license was a present grant or an agreement to grant (additional) licenses in the future.

Applying Eighth Circuit procedural law and New York contract law, the Federal Circuit reversed the district court’s ruling that the two subsidiaries were not licensees under the agreement. First, it found that the agreement provided a “singular, present grant,” relying on the language “agrees to grant and does hereby grant” and prior cases. (p. 9-10, emphasis in original.) Therefore, the grant took place before the expiration date provided in the agreement. Second, it found that the definition of “Subsidiary” in the agreement included the two subsidiaries at issue even though they did not exist at the time of the grant. Just as a license may include a present grant of rights to future inventions, so that the pool of patents could grow, the court found that
“the ‘Subsidiary’ definition allows class membership to grow (or shrink) over time, and so the non-existence of GDM and Memorex at the time of the license grant did not prevent either entity from receiving the benefits of the fully vested licenses.” (p. 10.)

The opinion can be found here.

Board of Trustees v. Roche Molecular

2009-09-30T13:39:00.000-07:00

Propriety of Appeal. The district court granted summary judgment of obviousness, which the plaintiff appealed, but the defendant appealed adverse decisions regarding ownership and licensing. The Federal Circuit concluded that its “arguments would expand its rights under the judgment and, thus, are properly the subject of a cross-appeal.” (p. 7.) Namely, under the invalidity decision the defendant was free of worry from the asserted claims, but not necessarily the entire patent, as it would be under the ownership counterclaim.

Standing. The court never addressed the obviousness issue. Instead, it focused on the defendants’ claim regarding ownership. The court found that a state statute of limitations barred the defendants’ claim for ownership. However, the same facts on which the claim for ownership was based lead the court to conclude that the plaintiff did not have standing to bring its infringement case. Therefore, the judgment of invalidity was vacated and the case was remanded so that the case could be dismissed for lack of jurisdiction. The district court’s judgment regarding the defendants’ counterclaim was affirmed since they had standing to bring that claim. (p. 25.) The opinion is here.

Astrazeneca v. Teva

2009-09-25T13:11:00.000-07:00

The district court granted summary judgment that the defendant did not present sufficient evidence for a jury to find inequitable conduct and the Federal Circuit affirmed. The issue is summarized as follows: “The issue presented in this case relates to the extent to which the patent applicant, having fully disclosed the relevant prior art and having provided comparative data to the satisfaction of the patent examiner, must also present any additional unpublished information in the applicant’s possession concerning other less structurally similar compounds, and must also synthesize additional compounds for comparative testing.” (p. 4.) The court concluded that the applicant need not. At least not in this case. (See p. 12 (“Although there may be situations in which the failure to conduct specific tests of specific compounds can be criticized, in this case there was no evidence that the information gleaned, if such tests had been conducted, would have been material to patentability.”).)

Regarding deceptive intent, the court made clear that a showing of a high degree of materiality does not reduce the need to show deceptive intent at least at some threshold level. “While the court must, as the final step, weigh and balance the findings of materiality and intent, this presupposes that a threshold level of both of these elements has already been established by clear and convincing evidence.” (p. 16; p. 15; p. 4.)

In Re ‘318 Patent Infringement Litigation

2009-09-25T13:07:00.000-07:00

The ’318 patent “claims a method for treating Alzheimer’s disease with galanthamine.” The district court found that the claims were not enabled and the Federal Circuit affirmed. The court discussed the law of enablement and the policies behind it at some length, making the following general points before reaching the facts of the case at hand:

“Enablement is closely related to the requirement for utility.” (p. 9.)
“The utility requirement prevents mere ideas from being patented.” (p. 10.)
“The utility requirement also prevents the patenting of a mere research proposal or an invention that is simply an object of research.” (p. 10.)
The above is so because: “Allowing ideas, research proposals, or objects only of research to be patented has the potential to give priority to the wrong party and to confer power to block off whole areas of scientific development, without compensating benefit to the public.” (p. 11.)
Methods of treatment are usually supported by tests, but the inventor need not conduct those tests. (p. 11.)

In this case, testing was not available as of the priority date. The patentee argued “that utility may be established by analytic reasoning” in lieu of testing. (p. 14.) The court accepted this as a possibility, but found that the specification in this instance failed to provide such reasoning. “[T]he specification, even read in the light of the knowledge of those skilled in the art, does no more than state a hypothesis and propose testing to determine the accuracy of that hypothesis. That is not sufficient.” (p. 16.)

This case was decided based on enablement although the entire discussion concerned utility. See generally In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000) (“Lack of utility is a question of fact and the absence of enablement is a legal conclusion based on underlying factual inquiries.”) (citations omitted).

Kara Technology v. Stamps.com

2009-09-24T11:41:00.000-07:00

This case is interesting in view of its treatment of a claim construction issue in light of a case decided just a few days earlier, Edwards Lifesciences v. Cook. (Kara Technology was decided by Schall, Plager, and Moore while Edward Lifesciences was decided by Lourie, Rader, and Moore.) In that case, discussed in a prior post, the court limited a claim based on the specification and rejected an argument that claim differentiation supported a broader construction. Here, the court seemingly took the opposite approach, refusing to limit a claim term based on the specification and relying in part on claim differentiation (under the same circumstance as were present in Edwards, namely a dependent claim included a term that was left off of its independent claim). Regarding claim differentiation, the court stated “when the inventor wanted to restrict the claims to require the use of a key, he did so explicitly. None of the claims at issue on appeal recite the term ‘key.’ By contrast, all of the other independent claims require either an ‘encryption key’ or ‘key data.’ In addition, dependent claim 2 … explicitly adds the limitation [at issue] to claim 1….” (p. 9.) The court was not convinced that the specification required the claims to be limited to having a key even though “the specification repeatedly discusses a key embedded in the preestablished data” and”[i]n the only detailed embodiments in the patent, the key is embedded in the preestablished data.” In this case, this was “not enough … to limit the patentee’s clear, broader claims.” (p. 9.) In Edwards, the court reached the opposite conclusion based in part on the fact that “the only devices described in the specification” included the limitation not expressly in the claims (Edwards, p. 11.) and despite the fact that, under the doctrine of claim differentiation, “the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” (Kara, p. 9.)

Edwards Lifesciences v. Cook

2009-09-22T12:18:00.000-07:00

In this case, the patents “relate to intraluminal grafts for treating aneurisms and occlusive diseases of the blood vessels without open surgery.” (p. 2.) The main arguments involved claim construction. The patentee argued that the use of the terms “graft” and “intraluminal graft” suggested that the term “graft” was broader. The court, relying on the written description, disagreed. First, the specification used the terms interchangeably. “The interchangeable use of the two terms is akin to a definition equating these two.” (p. 11.) Second,” the only devices described in the specification are intraluminal, supporting an interpretation that is consistent with that description.” (p. 11.) Third, “the specification frequently describes an ‘intraluminal graft’ as ‘the present invention’ or ‘this invention,’ indicating an intent to limit the invention to intraluminal devices.” (p. 12.) Fourth, the context of the claims supported this construction. The court also rejected arguments based on claim differentiation: “Even if the claim construction had rendered the dependent claim redundant, the doctrine of claim differentiation does not require us to give the ‘graft’ devices their broadest possible meaning. We may instead limit ‘grafts’ to ‘intraluminal’ devices, as demanded by the specification.” (p. 13; see also id. (“Different terms or phrases in separate claims may be construed to cover the same subject matter where the written description and prosecution history indicate that such a reading of the terms or phrases is proper.”) (quoting Nystrom v. TREX Co., 424 F.3d 1136, 1143 (Fed. Cir. 2005).)

Regarding another term, the patentee made another claim differentiation argument, this one based on the fact that a dependent claim added a requirement for a wire that was not expressly found in the independent claim. This is normally the strongest case for claim differentiation but it was dismissed quickly: “[C]laim differentiation is a rule of thumb that does not trump the clear import of the specification. Here, the specification and the parties’ agreement in the district court make clear that the claimed graft devices require wires.” (p. 16 (citation omitted).)

Concerning another term, the court stated that, for a definition provided by the patentee, “the location within the specification in which the definition appears is irrelevant.” (p. 20-21.) Accordinlgy, “the specification’s use of ‘i.e.’ signals an intent to define the word to which it refers … and that definition was not limited to the embodiment being discussed.” (p. 21.)

In Re Lister

2009-09-22T11:39:00.000-07:00

This case involving a PTO rejection of claims for a method of playing golf using a tee for most of the shots hinged on whether a reference was “publicly accessible.” The applicant had submitted a manuscript describing the invention to the copyright office more than a year before filing an application. The key question is whether the manuscript was publicly accessible by virtue of being in the copyright office.

“In several cases involving references stored in libraries, we have considered whether the research tools available would have been sufficient to permit an interested researcher to locate and examine the reference.” (p. 6.) Cataloging and indexing are important research tools but not the whole story. “While cataloging and indexing have played a significant role in our cases involving library references, we have explained that neither cataloging nor indexing is a necessary condition for a reference to be publicly accessible.” (p. 7.) The standard for public accessibility is “whether an interested researcher would have been sufficiently capable of finding the reference and examining its contents” in light of all “the facts and circumstances surrounding the disclosure.” (p. 8.)

The court noted that “a reference can be considered publicly accessible even if gaining access to it might require a significant amount of travel” and that it is “unnecessary to show that anyone actually inspected the reference.” (p. 8.) The court also found that in this case the inability to make copies did not render the reference inaccessible. (p. 8.) Further, although the copyright database did not provide any reasonable means of searching, two other databases, Westlaw and Dialog, permitted searching of titles by keywords of materials in the copyright office. However, there was insufficient evidence to establish when the reference at issue was available in Westlaw or Dialog. “[I]n this case the government has not identified any evidence of the general practice of the Copyright Office, Westlaw, or Dialog with regard to database updates. Absent such evidence, we have no basis to conclude that the manuscript was publicly accessible prior to the critical date.” (p. 16.) The court rejected arguments that a prima facie case showing that the manuscript was in the databases was established. “We see little difference between the evidence in this case and a situation in which an examiner comes across an undated reference that discloses an invention for which an applicant is seeking the patent. We surely would not view the mere existence of the reference in the latter scenario as prima facie evidence that it was available prior to the applicant’s critical date.” (p. 16-17.)

Asymmetrx v. Biocare Medical

2009-09-18T13:48:00.000-07:00

The Federal Circuit determined that the plaintiff in this matter did not have standing to sue since it did not have “all substantial rights” to the patent at issue. The parties and the district court had not addressed this concern, but the court noted that “an appellate court must satisfy itself that it has standing and jurisdiction whether or not the parties have raised them.” (p. 6.)

The court provided background on when a licensee can have standing to sue in its own name and concluded by stating that “the critical determination regarding a party’s ability to sue in its own name is whether an agreement transferring patent rights to that party is, in effect, an assignment or a mere license.” (p. 8.) The difference hinges on the extent of the rights retained by the patentee. In this case, the patentee retained several substantial interests, including:

the right to sue for infringement;
the right to make and use the patented product, p63 antibodies, for its own academic research purposes;
the right to provide the p63 antibodies to non-profit or governmental institutions for academic research purposes;
a great deal of control over aspects of the licensed products within the commercial diagnostic field;
specifying that manufacture had to take place in the United States during the period of exclusivity; and
maintaining input on sublicensing and receiving a share of those royalties. (p. 10-11.)

In addition, the licensee had “to cooperate with [the patentee] to maintain the patent rights, so as to enable [it] to apply for, to prosecute, and to maintain patent applications and patents in [its] name.” (p. 11.) The patentee, under the agreement, also had a right to join any suit, approve settlements, and brings its own infringement action. The court found that “[w]hile any of these restrictions alone might not have been destructive of the transfer of all substantial rights, their totality is sufficient to do so.” (p. 12.) The complete opinion is here.

Vita-Mix v. Basic Holding

2009-09-16T12:20:00.000-07:00

Several issues decided on summary judgment were addressed in this decision, and certain aspects pertaining to contributory infringement and inducement are mentioned here.

Regarding contributory infringement, the court agreed that a commodity of commerce is suitable for substantial non-infringing uses non-infringing if those uses “are not unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental.” (p. 14.) However, “an infringer does not evade liability by bundling an infringing device with separate and distinct components that are capable of noninfringing use.” (p. 15.) The court found that the accused devices were capable of substantial non-infringing uses. Interestingly, it was possible that during the use of the devices in non-infringing ways, the device would occasionally infringe. This did not change the court’s analysis: “Even assuming that the device might inadvertently infringe the patent for a brief time in the majority of uses does not mean that the non-infringing use … is not substantial enough to avoid contributory liability. The analysis would be different if the [accused device] could not be operated in a non-infringing way unless the user infringed at some point. But where, as here, there is a common use that neither infringes nor requires infringement, the substantiality of that use is unaffected by any unrelated infringing operations.” (p. 16, n. 1.)

Regarding inducement, the court articulated the standard as follows: “Inducement requires a showing that the alleged inducer knew of the patent, knowingly induced the infringing acts, and possessed a specific intent to encourage another’s infringement of the patent.” (p. 16.) In this case, the court rejected the patentee’s attempt to support an inference of intent through “the product instructions and the design of the device.” (p. 17.) Since those things encouraged non-infringing uses and not infringing uses, there was no evidence that the defendant “intends to encourage infringement by its customers.” (p. 18.)

Prometheus v. Mayo

2009-09-16T11:31:00.000-07:00

Seven amicus briefs were filed in this appeal of a finding by the district court that the claimed method was drawn to non-statutory subject matter. Relying on its Bilski opinion, the Federal Circuit in its opinion discussed the machine-or-transformation test and concluded that the claimed method of treatment was drawn to patent eligible subject matter.

The patents at issue “claim methods that seek to optimize therapeutic efficacy while minimizing toxic side effects,” and include two main steps: administering a drug to a person and determining the levels of the drug’s metabolites in the subject. (p. 2.) The “measured metabolite levels are then compared to pre-determined metabolite levels” to determine whether to adjust them. The court found that the two main steps were transformative and that although the remaining aspects involved only mental steps, this alone did not remove the claims from patent eligible subject matter.

Claims drawn to a fundamental principle are not patent eligible, but those drawn to an application of a fundamental principle are. The court acknowledged that determining “whether a claim is drawn to a fundamental principle or an application of a fundamental principle” is “hardly straightforward.” (p. 8.) It then quoted its “definitive test” from Bilski: “A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” (p. 8.) This machine-or-transformation test can be satisfied for a method claim by showing that a “claim is tied to a particular machine, or by showing that his claim transforms an article.” (p. 8.) In addition, the machine or transformation part of the claim must not be “insignificant extra-solution activity” and must “must impose meaningful limits on the claim’s scope.” (p. 8.) “This transformation must be central to the purpose of the claimed process.”

The court found that the administering and determining steps were transformative. For the administering step, the ”transformation is of the human body following” administration and for the determining step the transformation is “the various chemical and physical changes of the drug’s metabolites that enable their concentrations to be determined.” (p. 14-15.) Rejecting arguments that the transformations were natural processes, the court stated that methods of treatment “are always transformative when a defined group of drugs is administered to the body to ameliorate the effects of an undesired condition.” (p. 15.)

Similarly, the court distinguished natural processes from transformations by noting that “quite literally every transformation of physical matter can be described as occurring according to natural processes and natural law. Transformations operate by natural principles. The transformation here, however, is the result of the physical administration of a drug to a subject to transform—i.e., treat—the subject, which is itself not a natural process.” (p. 16.)

The determining step also involved a transformation because “those levels cannot be determined by mere inspection.” Rather, “some form of manipulation, such as the high pressure liquid chromatography method specified in several of the asserted dependent claims or other modification of the substances to be measured, is necessary to extract the metabolites from a bodily sample and determine their concentration.” (p. 16-17.)

The court distinguished the present case from In re Grams, 888 F.2d 835 (Fed. Cir. 1989), a case which involved “(1) performing a clinical test on individuals and (2) based on the data from that test, determining if an abnormality existed and determining possible causes of any abnormality by using an algorithm.” (p. 18-19.) In that case the process was merely an algorithm combined with a data-gathering step,” unlike here, where “the claims are to transformative methods of treatment, not correlations.” (p. 21.).

Although the court found that the final steps did not meet the machine-or-transformation test, this did not alter the outcome. “A subsequent mental step does not, by itself, negate the transformative nature of prior steps.” (p. 20.)

Amgen v. Roche

2009-09-15T14:05:00.000-07:00

Here are a few points gleaned from this 80-page opinion.

Obviousness-type double patenting. The Federal Circuit held that §121’s safe harbor from obviousness-type double patenting for divisional applications did not apply to continuations. “We conclude that, because the … applications were filed as continuation—rather than divisional—applications, the … patents do not receive the benefit of § 121.” (p. 14.) It also reviewed the law of obviousness-type double patenting, which “entails two steps: (1) construction of the claims in the earlier patent and the claim in the later patent to identify any differences, and (2) determination of whether the differences in subject matter between the claims render the claims patentably distinct.” (30-31.) And the second “part of the obviousness-type double patenting analysis is analogous to an obviousness analysis under 35 U.S.C. § 103, except that the ’008 patent is not considered prior art.” (p. 32.) In this case, involving the “production of the protein erythropoietin (‘EPO’) using … DNA technology,” it found that those of “ordinary skill in the art would not have reasonably expected to successfully produce isolatable quantities of glycosylated EPO having the stated biological activities in transfected CHO cells. Put most simply, CHO cells transfected with the EPO DNA sequence and the production of recombinant, in vivo biologically active EPO glycoprotein are patentably distinct inventions.” (p. 34.)

Product-by-process claims. “It has long been the case that an old product is not patentable even if it is made by a new process.” (p.41.) “However, a new product may be patented by reciting source or process limitations so long as the product is new and unobvious.” (p.42.) Therefore, “[i]n determining validity of a product-by-process claim, the focus is on the product and not on the process of making it.” (p. 47.) And so “a product-by-process claim can be anticipated by a prior art product that does not adhere to the claim’s process limitation.” On the other hand, for infringement, “the focus is on the process of making the product as much as it is on the product itself.” This quirk creates an unusual situation:
“For product-by-process claims, that which anticipates if earlier does not necessarily infringe if later. That is because a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim. Similarly, that which infringes if later does not necessarily anticipate if earlier. That is because an accused product may meet each limitation in a claim, but not possess features imparted by a process limitation that might distinguish the claimed invention from the prior art.” (p. 48.)

Indefiniteness. The court noted that the purpose of product-by-process claims is to allow “the patentee to obtain a patent on the product even though the patentee cannot adequately describe the features that distinguish it from prior art products.” They are therefore used when the patentable distinctions are “ difficult-to-describe.” “Thus, to call the process limitation indefinite in this situation would defeat one of the purposes of product-by-process claims, namely permitting product-by-process claims reciting new products lacking physical description.” (p. 55-56.)

Infringement under §271(g). This section provides for infringement when a product made by a patented process is imported. It applies unless “the product made by the patented process is ‘materially changed by subsequent processes’ prior to importation.” (p. 62.) In discussing materiality, the court noted the following: “Materiality is context-dependent.” (p. 65.) “A good source for determining whether a change in a product of a process is material under § 271(g) is the patent. Where the specification or asserted claims recite a structure or function for the product of the processes, then significant variations from the recited structure and function are material. What makes a variation significant enough to be a ‘material change,’ however, is a question of degree.” (p. 65-66.)

Jury instructions. The court left open the issue of whether jury instructions should be reviewed under its own law or the law of the regional circuit. (p. 44, n. 13.)

Lucent v. Gateway

2009-09-12T12:33:00.000-07:00

This case involved a patent directed towards “entering information into fields on a computer screen without using a keyboard.” (p. 3.) Several parties were involved, including Microsoft, and the case went to trial. The jury awarded $357,693,056.18 to the plaintiff. Numerous issues were on appeal. The Federal Circuit upheld the validity and infringement findings but vacated the damages and remanded. Here are a few of the highlights gleaned from the detailed and lengthy opinion:

Regarding direct infringement, the court pointed out that, “[j]ust as anticipation can be found by a single prior art use, a finding of infringement can rest on as little as one instance of the claimed method being performed during the pertinent time period.” (p. 19.) With little direct evidence that anyone performed the claimed method using Microsoft products, the court relied on circumstantial evidence to uphold the verdict. However, it noted that the plaintiff “would have been on much firmer ground had it introduced some direct evidence of using the claimed method.” (p. 23.)

Regarding contributory infringement, as framed by the parties “the main issue reduces to whether the ‘material or apparatus’ is the entire software package or just the particular tool (e.g., the calendar date-picker) that performs the claimed method.” (p. 24-25.) This is because the entire software package had substantial non-infringing uses, but an individual component of the package did not. The court rejected the entire package argument, essentially concluding that if it were a prevailing argument, contributory infringement could be evaded by including extra features in a package with infringing features. “Here, the infringing feature for completing the forms, i.e., the date-picker tool, is suitable only for an infringing use. Inclusion of the date-picker feature within a larger program does not change the date-picker’s ability to infringe. Because Microsoft included the date-picker tool in Outlook, the jury could reasonably conclude, based on the evidence presented, that Microsoft intended computer users to use the tool—perhaps not frequently—and the only intended use of the tool infringed the Day patent.” (. 27.)

Regarding inducement, the court acknowledged, quoting DSU Medical, it “requires evidence of culpable conduct, directed to encouraging another’s infringement, not merely that the inducer had knowledge of the direct infringer’s activities.” But, in upholding the finding of infringement on thin evidence, also noted that a “plaintiff may still prove the intent element through circumstantial evidence, just as with direct infringement….” (p. 28.)

Regarding damages, the court noted two ways that litigants calculate a reasonable royalty: (1) “the analytical method, focuses on the infringer’s projections of profit for the infringing product,” and (2) “the hypothetical negotiation or the ‘willing licensor-willing licensee’ approach, attempts to ascertain the royalty upon which the parties would have agreed had they successfully negotiated an agreement just before infringement began.” (p. 33.) Concerning the hypothetical negotiation, the court discussed the differences between a running royalty and lump sum analysis. The court found that the evidence did not support the damages award. One factor was that the “evidence can support only a finding that the infringing feature contained in Microsoft Outlook is but a tiny feature of one part of a much larger software program.” (p. 48.) Thus, the resolution of the dispute concerning contributory infringement is mitigated somewhat on the damages side, with the court concluding “the glaring imbalance between infringing and non-infringing features must impact the analysis of how much profit can properly be attributed to the use of the date-picker compared to non-patented elements and other features of Outlook.” (p. 49.)

Regarding the entire market value rule, the court stated: “Although our law states certain mandatory conditions for applying the entire market value rule, courts must nevertheless be cognizant of a fundamental relationship between the entire market value rule and the calculation of a running royalty damages award. Simply put, the base used in a running royalty calculation can always be the value of the entire commercial embodiment, as long as the magnitude of the rate is within an acceptable range (as determined by the evidence).” (p. 61.) In other words, “[t]here is nothing inherently wrong with using the market value of the entire product, especially when there is no established market value for the infringing component or feature, so long as the multiplier accounts for the proportion of the base represented by the infringing component or feature.” (p. 62.)

Fresenius v. Baxter International

2009-09-10T12:00:00.000-07:00

(2008-1306,-1331, Sept. 10, 2009) Baxter’s argument before the trial court that Fresenius failed to show that a system was prior art was not sufficient to preserve other arguments regarding the prior art, such as that it failed to show all the limitations: “[O]ne specific challenge to an anticipation finding does not preserve all possible challenges to that finding. If a party fails to raise an argument before the trial court, or presents only a skeletal or undeveloped argument to the trial court, we may deem that argument waived on appeal, and we do so here.” (p. 10.) Further, the parties disputed what the prior art system showed, and therefore were presenting a new factual dispute on appeal that “should have been presented to the district court for its consideration in the first instance.” (p. 11.)

Fresenius failed to provide substantial evidence of invalidity for certain means-plus-function claims because it failed to include any evidence that the corresponding structure was disclosed. “Just as a patentee who seeks to prove infringement must provide a structural analysis by demonstrating that the accused device has the identified corresponding structure or an equivalent structure, a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” (p. 17.)

KSR and Motivation to Combine. The court noted that the trial was conducted and JMOL issues decided before KSR, and that “the district court applied the teaching-suggestion-motivation test for obviousness as it existed before it was modified by KSR.” (p. 19.) The district court had reversed the jury’s finding of obviousness, and the Federal Circuit reversed the district court. Referring to the motivation to combine test relied on in some form by the jury and the district court, the court stated: “We first note that it remains appropriate for a post-KSR court considering obviousness ‘to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.’” (p. 20 (quoting KSR).) The court went on to find that, under KSR, there was substantial evidence of a suggestion to combine to support the jury’s finding of obviousness.

Regarding the granting of a permanent injunction, the court found that the district court correctly applied the four-factor post-eBay test and did not abuse its discretion, but nonetheless vacated and remanded for reconsideration in light of the other holdings in its opinion (that some of the claims at issue were invalid for obviousness). (p. 24.)

Damages. The court also vacated the royalty award for reconsideration in light of the fact that now fewer claims (and patents) were found to be infringed, noting that this may alter the hypothetical negotiation. (p. 24-25.)

Reexamination. In separate concurring opinions, Judges Dyk and Newman disagreed about whether a stay of the remaining proceedings is warranted in this case. While noting that reexam can be useful, Judge Newman cautioned: “if routinely available to delay the judicial resolution of disputes, the procedure is subject to inequity, if not manipulation and abuse, through the delays that are inherent in PTO activity.” (p. 3 of Newman concurrence.)

Ron Nystrom v. Trex Company

2009-09-08T09:55:00.000-07:00

(2009-1026 Sept. 8, 2009) Claim preclusion barred the patentee from arguing that wood boards infringed because the boards were “essentially the same” with respect to the limitations at issue as boards previously found to be noninfringing. In a previous case, the defendant’s wood boards were found not to literally infringe based on two limitations. Furthermore, in that case the patentee had waived any argument for infringement under the doctrine of equivalents. In this suit, the patentee sought to argue infringement under the doctrine of equivalents for the defendants’ new product. The new boards were concededly materially different from those at issue in the first case in some respects, but not with respect to “the only two limitations leading to the judgment of noninfringement in the first suit.” (p. 6.)

Noting that this case presents a “slightly new angle on claim preclusion,” the court concluded that it should apply: “[If t]he accused device of the second suit remains unchanged with respect to the corresponding claim limitations at issue in the first suit, then [the plaintiff] has no remaining avenue to pursue his claims now. In essence, [the plaintiff] would be attempting to prove infringement of the same claim limitations as to the same features of the accused devices. As such, this case presents the exact situation that res judicata seeks to prevent.” (p. 7.)

The plaintiff also argued that the new boards were not “insubstantially different with respect to the pertinent claim elements,” but to no avail. So the “tactical decision” to not pursue an infringement theory based on the doctrine of equivalents in the first suit “did not pay off” and the plaintiff did not get “a second bite at the apple.” (p. 8-9.)

Note: This case was decided on claim preclusion grounds but might more precisely have been decided based on issue preclusion since the products were admittedly materially different but the dispositive infringement issue was the same.

In Re Robert Skvorecz

2009-09-04T07:45:00.000-07:00

On appeal from a rejection of a reissue application by the PTO board, the court reversed and remanded on several grounds in this opinion. One involved indefiniteness and the court emphasized that this is determined from the perspective of one of skill in the art in the context of the claim and patent while concluding that a limitation did not require further antecedent basis. With regard to written description, the court again relied on how a person of skill in the art would view certain drawings to conclude that the description was adequate.

Another issue was the interpretation of “comprising,” which the court felt the Board had taken too far. The patent required each leg of the device to have an offset and a prior art reference disclosed a device in which some but not all legs had offsets. The Board interpreted the claim “to include wire legs without offsets, because the claim uses the open-ended transition term ‘comprising.’” (p. 7.) The Federal Circuit rejected this reasoning: “The signal ‘comprising’ does not render a claim anticipated by a device that contains less (rather th[a]n more) than what is claimed.” (p. 8.) Therefore, it was incorrect “to interpret ‘comprising’ to mean that not all the Skvorecz wire legs need have offsets, despite the claims that state that ‘each wire leg’ has an offset. (Id.) In this context, the court also discussed the “protocol of giving claims their broadest reasonable interpretation during examination,” noting that it “does not include giving claims a legally incorrect interpretation. This protocol is solely an examination expedient, not a rule of claim construction. Its purpose is to facilitate exploring the metes and bounds to which the applicant may be entitled, and thus to aid in sharpening and clarifying the claims during the application stage, when claims are readily changed.” (Id.)

Martek Biosciences v. Nutrinova

2009-09-03T13:45:00.000-07:00

A five judge panel heard this case and disagreed about the construction of “animal.” The majority concluded that the patentee defined the term in the specification and that the term carried its ordinary meaning, in which case it included humans. However, the dissent felt that this was an “unusual situation in which a purported definition of a claim term in the written description is totally negated by the remainder of the text of the patent. [The patentee’s] attempt at lexicography does not conform to the way in which it otherwise describes its invention.” (p. 2 of dissent.) In other words, the dissent felt that the claims and most of the specification used the term “animal” in a manner that excluded humans even though the explicit definition included in one sentence of the specification did not exclude humans. The majority concluded that not only had the patentee acted as a lexicographer, but that the other portions of the specification did not “constitute a clear and manifest disavowal of human animals.”

The other aspects of the opinion were unanimous. The court noted that the written description requirement can be satisfied even if the scope of the claims is broader than the disclosure. “[A] patent claim is not necessarily invalid for lack of written description just because it is broader than the specific examples disclosed.” (p. 9.) Also, in a discussion concerning prior inventorship evidence, the court said that an abandoned application does not establish reduction to practice. “[W]hile an abandoned patent application is evidence of conception, it is insufficient to corroborate testimony that an alleged prior inventor reduced the invention to practice.” (p. 18.) Regarding enablement, two narrower dependent claims were not invalid for lack of enablement even though the independent claim may have been. (p. 25.) Finally, concerning infringement, the court stated that tests were not necessarily required to establish the presence of a functional limitation. In explaining Kim v. ConAgra Foods, Inc., 465 F.3d 1312 (Fed. Cir. 2006), it stated “we did not articulate a general rule requiring one who alleges infringement of a claim containing functional limitations to perform actual tests or experiments on the accused product or method.” (p. 15.) As such, the patentee was able to rely on “testimony from two experts, each of whom conceptually analyzed the accused process and testified that it must meet the functional claim limitation based on the [accused] composition … and the known effects of chloride concentration on stainless steel corrosion.” (Id. (emphasis added))

Sky Technologies v. SAP AG

2009-08-21T07:13:00.000-07:00

After the district court found that the plaintiff had standing because it acquired all substantial rights to the patent, the defendant brought an interlocutory appeal. The Federal Circuit affirmed the district court in this opinion, holding that transfers of patent rights other than by assignment do not necessarily have to be in writing.

The plaintiff obtained the patent through a foreclosure proceeding. The court noted that patent ownership is generally determined by state law, but assignment of patents is determined by federal law. However, transfer of patent rights other than by assignment, i.e., by operation of law, is determined by state law. (p. 7-8.) Discussing and relying on Akazawa v. Link New Technology International, Inc., 520 F.3d 1354 (Fed. Cir. 2008), the court confirmed that “transfer of patent ownership by operation of law is permissible without a writing.” (p. 9.) Since this occurred in accordance with the applicable state law, the plaintiff had standing.

Cardiac Pacemakers v. St. Jude Medical

2009-08-19T12:04:00.000-07:00

The en banc portion of this opinion holds that section 271(f) does not apply to method claims, overruling Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005). The court relied on the presumption against extraterritoriality, Congressional intent reflected in the legislative history, the language of Section 271(f), the overall statutory scheme, the fact that a clear majority of the amicus briefs agreed, and the general awkwardness of the notion of supplying steps to reach its conclusion, (p. 26 (“it is difficult to conceive how one might supply or cause to be supplied all or a substantial portion of the steps in a patented method in the sense contemplated by section 271(f)”).) The court also distinguished how the Supreme Court drew on similarities between method and apparatus claims in Quanta Computer, Inc. v. LG Electronics, Inc., 128 S. Ct. 2109 (2008), in the context of patent exhaustion from how the Federal Circuit has drawn “a clear distinction between method and apparatus claims for purposes of infringement liability, which is what Section 271 is directed to.” (p. 23-24.)

The other aspects of the opinion were decided by the panel only. One issue was whether a change in claim construction of one term was enough to raise new issues regarding validity. “While it is true that a changed claim construction may permit new anticipation arguments, that cannot be the case here because the ‘determining’ limitation never served as a basis for distinguishing the prior art from the ’288 patent and is therefore not a ‘directly related new issue.’” (p. 11.)

Concerning damages, the court found that damages should be limited to only those devices that can be shown to have actually performed the method since only a method claimed remained. The fact that the defendant did not raise this argument at the time of trial did not result in a waiver because at that time an apparatus claim was still at issue. “St. Jude cannot have been expected to raise at trial an argument that would not have reduced damages until after Cardiac abandoned its apparatus claim on remand.” (p. 16.)

Callaway v. Acushnet

2009-08-17T06:59:00.000-07:00

Golf balls were at the center of this case, which went to trial on the issue of invalidity. Infringement was stipulated to, the district court granted summary judgment of no anticipation, and the jury found that all but one of the claims—a dependent claim—were not obvious. The Federal Circuit reversed the district court regarding anticipation and remanded for a new trial on obviousness because the jury’s conclusions were irreconcilably inconsistent (since a dependent claim can’t be obvious if the claim from which it depends is not.)

The Federal Circuit agreed with the district court’s construction of the one claim term at issue on appeal. Notably, it relied in part on extrinsic evidence to support this conclusion in the form of testimony regarding accepted practice in the art. (p. 11 (“Such evidence of accepted practice within the art, when not at variance with the intrinsic evidence, is relevant to the question of how a person of skill in the pertinent field would understand a term.” ) (citing Phillips)).

The district court’s exclusion of evidence of a made-for-trial golf ball that was made by combining prior art elements was not in error. The Federal Circuit agreed that such evidence “ran a substantial risk of leading the jury towards the inappropriate use of hindsight and towards unduly weighting Acushnet’s arguments concerning motivation to combine the prior art.” (p. 18.)
The district court did not abuse its discretion by not allowing evidence of an ongoing inter partes reexamination. The Federal Circuit agreed that “non-final re-examination determinations were of little relevance to the jury’s independent deliberations on the factual issues underlying the question of obviousness” but that the risk of confusion was high. (p. 19.) Although the plaintiff had stated “that multiple patent examiners had reviewed the patents” but did not reveal that the asserted claims stood rejected by other examiners in its opening statement, the defendant failed to object at that time. Countering this statement was not a sufficient reason to allow the inter partes evidence in.

On the issue of inconsistent verdicts, Third Circuit law was applied. Because “a reading of the verdicts that would solve the apparent inconsistency proves impossible and the evidence might support either of the two inconsistent verdicts,” a new trial was necessary. (p. 23.)

The anticipation issue hinged on whether material was incorporated by reference into a prior art reference. On this issue of law, the Federal Circuit disagreed with the district court’s conclusion because the reference “identifies with specificity both what material is being incorporated by reference … and where it may be found.” (p. 27.)

Finally, although model golf balls designed to demonstrate obviousness were properly excluded, the Federal Circuit stated that a model golf ball for demonstrating the teachings of a prior art reference for the purposes of anticipation could be admissible if properly authenticated.

Wedgetail v. Huddleston

2009-08-14T07:50:00.000-07:00

This opinion provides an overview of the circumstances in which the award of attorney fees under § 285 may be appropriate. The case must be exceptional, which the court reviews for clear error, and if it is, the district court determines whether attorney fees are appropriate, which is reviewed for abuse of discretion. (p. 3; 4 (providing numerous cases as examples).) Exceptional cases may be found in the following situations: “inequitable conduct before the PTO; litigation misconduct; vexatious, unjustified, and otherwise bad faith litigation; a frivolous suit or willful infringement.” (p. 3.) The Federal Circuit also stated that the district court need not necessarily provide its reasoning for its decision regarding attorney fees. In this case, the Federal Circuit determined that the lack of reasoning was at most harmless because the conclusion (no award of attorney fees) was supported by the record. (pp. 8-9.)

When To Determine Whether a Claim Is Indefinite

2009-08-14T07:36:00.000-07:00

According to the standard for indefiniteness, whether a claim is invalid for indefiniteness would have to be determined at the time the claim is construed, not after. This is because the standard is whether the claim can be construed at all. See, e.g., Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008) (“A claim will be found indefinite only if it is insolubly ambiguous, and no narrowing construction can properly be adopted…. On the other hand, if the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds.”) (internal quotation marks and citations omitted); see also id. (“Indefiniteness is a matter of claim construction ….”).

Notwithstanding this standard, a defendant will often adopt the strategy of seeking a preferred construction and arguing that if the court adopts the patentee’s proposed construction the claim would be indefinite. And sometimes defendants will, after the court has construed the claims, argue that the adopted construction is indefinite. While the case law is not clear regarding the timing for deciding the issue of indefiniteness, the standard for indefiniteness should force defendants to decide early on, i.e., when proposing claim constructions, whether to pursue a defense of indefiniteness. A defendant should not be able to propose a definition for a term and later argue that the very same term is insolubly ambiguous. If a term can’t be construed, there should be no proposed construction for it. Therefore, a defendant should state its belief that a particular claim is indefinite when proposing constructions, and the court should decide this issue in the Markman ruling.

Hypothetical Claims for Determining Enablement

2009-08-14T07:32:00.000-07:00

Determining Whether the “Full Scope” of Claims Is Enabled: The Need for Hypothetical Closed Claims

When assessing whether a patent has fulfilled the enablement requirement of section 112, it is the “full scope” of the claims that must be enabled. See Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008) (“The full scope of the claimed invention must be enabled.”). This standard, however, overstates the obligation for open-ended claims. Open-ended claims have, in theory, a virtually unlimited scope since they encompass anything that includes the limitations even if additional unclaimed features are also present. Therefore, it is not actually possible for the full scope of any open-ended claim to be enabled. There will always be an additional feature that would fall within the scope of the claim that the specification would never mention and would not be within the grasp of a person of ordinary skill in the art.

To be more precise, then, the enablement standard for open-ended claims should first assume that such claims are closed claims, and then determine whether the full scope of those hypothetical claims has been enabled. This would more accurately reflect the standard as applied in practice and would be the only realistic requirement that could be imposed on inventors.

Hyatt v. Doll

2009-08-11T13:49:00.000-07:00

This opinion reviewed the history of 35 U.S.C. § 145, which allows a patent applicant to challenge the decision of the PTO in a district court proceeding (as an alternative to the more common path of seeking review in the Federal Circuit). At issue was whether evidence not introduced during the proceedings at the PTO could be considered by the district court. The applicant sought to have a declaration considered that he argued would have helped establish that the rejected claims met the written description requirement. The district court “excluded the Hyatt declaration because it found Hyatt had been ‘negligent’ in failing to submit it to the PTO during examination or in a timely manner to the Board on appeal.” (p. 11.) It then granted summary judgment that the claims were invalid for failure to meet the written description requirement. In a lengthy opinion, the Federal Circuit agreed with the district court on the issue of excluding the declaration and affirmed the grant of summary judgment.

In reaching its conclusion on “the issue of exactly what standard governs district courts in ruling on the admissibility of evidence withheld during examination in the PTO,” (p. 12), the Federal Circuit discussed the history of § 145, the Administrative Procedure Act (which it has held applies to actions under § 145 (p. 39)), and the “general practice of federal courts over eighty years” (p. 34). The court made clear both that there is no absolute rule against introducing new evidence in a § 145 action and that its decision was specific to the facts of this case. The applicant’s actions during prosecution appeared to weigh heavily in the decision, as the court noted in several ways: Noting that “On these facts…” the district court must be upheld (p. 50 (emphasis in original)), that the applicant “willfully refused to provide evidence in his possession in response to a valid action by the examiner” (p. 50), that the applicant exhibited “willful non-cooperation,” and concluding: “This blatant non-cooperation was willful. Allowing Hyatt to escape the consequences of his refusal to timely submit his own information to the PTO that he was required by law and requested by the examiner to submit would hardly be consonant with the APA or the legislative purpose of § 145.” (p. 51.)

In sum, the court found that in some circumstances, a district court may exclude new evidence in a § 145 action but made clear that it was not creating an absolute rule against ever admitting such evidence. “The dissent incorrectly describes our decision as promulgating a ‘sweeping exclusionary rule.’ We have not adopted a ‘sweeping’ or ‘per se rule.’ We express no opinion as to admissibility of evidence in the multitude of variegated factual scenarios that may arise in the future which the dissent claims are decided today.” (p. 55.)

Bayer v. Barr Labs

2009-08-06T11:15:00.000-07:00

This is a pharmaceutical case in which the drug formula at issue was found to be obvious to try. The drug was known in the art but an effective formulation for delivery had not been developed. There were two obstacles to oral delivery of the drug—its solubility and the potential for acid degradation in the stomach. Reducing particle size could increase the solubility but that might also cause the drug to isomerize more in the acidic stomach. An enteric-coated pill would help protect the drug from the acid in the stomach (but this process has drawbacks itself.) Bayer ultimately found that the solubility could be increased by reducing particle size and that with this solution the bioavailability of the drug was not impacted, with or without an enteric coating. (p. 5-6.) So Bayer developed a “normal pill” with reduced particle size but no enteric coating.

The court found that this solution would have been obvious to try and that the two circumstances when what was “obvious to try” does not make something invalid as obvious were not met. Those two circumstances are (1) when all the possibilities must be tried because the prior art provides no way of eliminating some and (2) when it was in general obvious to use some new technology but the results weren’t predictable. The court, citing In re O’Farrell, 853 F.2d 894 (Fed. Cir. 1988) and KSR, 550 U.S. 398 (2007), described these as follows: (1) “When what would have been ‘obvious to try’ would have been to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful an invention would not have been obvious.” (p. 9.) And (2) “A finding of obviousness would not obtain where what was ‘obvious to try’ was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.” (p. 9-10.)

The court, based on the teachings of the art, concluded that one of skill in the art would have been “funneled” to just two options (the normal pill that Bayer developed or the enteric-coated pill) and that the prior art “guided the formulator precisely to the use of either a normal pill or an enteric-coated pill.” (p. 15.)

Secondary factors were not mentioned.

Judge Newman dissented, focusing largely on the degree of certainty required for there to be a reasonable expectation of success.

Touchcom v. Bereskin & Parr

2009-08-05T08:59:00.000-07:00

This case was decided on jurisdictional grounds. The plaintiff had hired a Canadian law firm to prosecute its patent and something went wrong along the way. The plaintiff is now attempting to sue the firm in the U.S. and the issue of personal jurisdiction was raised. The main question, and answer, is "whether the act of filing an application for a U.S. patent at the USPTO is sufficient to subject the filing attorney to personal jurisdiction in a malpractice claim that is based upon that filing and is brought in federal court. For the reasons discussed below, we conclude that it is." (p. 7.)

The issue of personal jurisdiction was determined under Fed. R. Civ. P. 4(k)(2), which provides for jurisdiction for a claim that arises under federal law but "the defendant is not subject to the jurisdiction of any state’s courts of general jurisdiction." (p. 12.) This rule applies when a defendant did not have sufficient contacts with any single state to confer jurisdiction but did have sufficient contacts with the U.S. as a whole. (p. 14.)

Applying this rule, the Federal Circuit concluded that the defendants did have sufficient contacts and the due process requirements were met so that personal jurisdiction would be appropriate under Rule 4(k)(2) (subject to a determination on remand that they are not subject to jurisdiction in any state).

Judge Prost dissented, agreeing with the majority's conclusion concerning Rule (4)(k)(2) and personal jurisdiction, but differing on the grounds that exercising personal jurisdiction would violate due process. (p. 26.)

University of Pittsburgh v. Hedrick

2009-08-05T08:23:00.000-07:00

This case centers around a dispute over the inventorship of an adipose-derived stem cell that can differentiate into other cells. The dispute was not between competing groups but among different researchers in the same lab. The researchers who wished to be included as inventors had arrived after some of the work on the claimed invention had been completed but they argued that their contributions were essential. The Federal Circuit spent three pages construing the claims at issue (pp. 7-9.) Interestingly, the researchers who sought to be included as inventors argued for a narrower construction, not broader. In fact, they argued that the broader construction would include prior art. (p. 8.)

At first glance one might assume that those arguing to be additional inventors (not prior sole inventors) would not be arguing for a narrower scope of invention. But here they were claiming that the actual, patentable invention occurred later in time, after their arrival and their contribution. Since the broader possible scope was clearly conceived before that time, they presumably had to seek a construction for a narrower invention that could not be shown to have been invented earlier.

Another aspect of this case that is of some interest is that the Federal Circuit had to construe the claims before a determination of inventorship could be made. Although inventorship has always been based on the scope of the claims, this seems to make this determination less certain.

Exergen v. SAAT

2009-08-05T07:35:00.000-07:00

This case involves infrared thermometers for taking people's temperature. The Federal Circuit reversed the jury's finding that one of the patents at issue was not invalid and reversed the jury's findings of infringement. It also affirmed the district court's denial of a motion to amend its pleadings to add allegations of inequitable conduct. So, as is not all that unusual, the case left the Federal Circuit in a much different posture than it was after trial (when the plaintiff had a $2.5 million judgment.)

Three points of note that I see here. First, before trial, the plaintiff waived any argument for infringement based on the doctrine of equivalents (p. 5), and it came back to haunt. (pp. 15 ("Exergen’s [argument], including its criticism of SAAT’s alleged ‘word-sniffing,’ is an argument sounding in the doctrine of equivalents—a doctrine ‘designed to do equity’ and ‘to relieve an inventor from a semantic strait jacket,’ but one which Exergen expressly waived before trial.").) This is often a tough call for a plaintiff to make. Arguing for infringement under the doctrine of equivalents weakens or at least confuses your literal infringement arguments. Plus, it is cumbersome and time consuming, so it is very tempting to just go for literal infringement, especially in light of all the hurdles placed in front of finding infringement under the doctrine of equivalents. However, as seen in this case, you can't be certain how things will go. That being said, it may well have still been the correct call in this case, depending on what obstacles were placed in front of the doctrine of equivalents.

The second part of this case of interest is the Federal Circuit's holding regarding pleading inequitable conduct. First, it stated that this issue was one of Federal Circuit law, not of the regional circuit. Then, it held that an allegation of inequitable conduct must be plead with particularity: "Based on the foregoing, and following the lead of the Seventh Circuit in fraud cases, we hold that in pleading inequitable conduct in patent cases, Rule 9(b) requires identification of the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO." (p. 23.) Specifically, "although ‘knowledge’ and ‘intent’ may be averred generally, a pleading of inequitable conduct under Rule 9(b) must include sufficient allegations of underlying facts from which a court may reasonably infer that a specific individual (1) knew of the withheld material information or of the falsity of the material misrepresentation, and (2) withheld or misrepresented this information with a specific intent to deceive the PTO.” (pp. 24-25.) While not 100% clear on what needs to be included in the pleadings, it provides decent guideposts.

Finally, the court made some surprisingly strong statements about the arguments of plaintiff's counsel. (p. 17, n.2.)