Infringement

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

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

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

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

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

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

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))