Promote the Progress - Patent case bibliographic summaries

Richie v. Vast Resources

Fri, 24 Apr 2009 00:00:00 EDT

Court: Court of Appeals for the Federal Circuit
Decided on: 24 Apr 2009

Panel: Bryson Michel Posner
Opinion by: Posner
Additional opinions: None filed.

Keywords:

claim construction - In dicta, the court noted the confusing use of the term "lubricious" to mean "slipper," which is the secondary meaning of the term.

claim construction - In dicta, the court noted the vague nature of the use of the term "appreciable amount" in the context of "oxide of boron" in a claim to a glass-based apparatus.

obviousness - Claims that merely reflect efforts at routine experimentation in substituting standard grades of material - here, borosilicate glass for soda lime glass - are invalid as defining obvious subject matter.

obviousness - The court cited several pre-KSR "substitution" cases as support for its holding obvious claims that merely reflect a substitution of standard grades of material.

obviousness - Despite holding obvious claims that reflected a substitution of standard grades of material, the court explicitly acknowledged that changes in the chemical makeup of a composition, here glass, "might not be obvious in any sense." Here, the claim's vague reference to an "appreciable amount" of a particular component seemed to preclude the possibility that the claim fell into this category.

secondary considerations - Judge Richard Posner, sitting by designation and writing in dicta, explained the concept of "commercial value" as an indicator of non-obvioousness: "an invention that has commercial value is likely to come on the market very shortly after the idea constituting the invention...became obvious; if the invention did not appear so soon despite its value in the market, this is some evidence that it wasn't obvious after all."

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Air Turbine Technology v. Atlas Copco

Fri, 24 Apr 2009 00:00:00 EDT

Court: Court of Appeals for the Federal Circuit
Decided on: 24 Apr 2009

Panel: Plager Prost Schall
Opinion by: Prost
Additional opinions: Plager (dissent);

Keywords:

attorney fees - Reversing the district court, the Federal Circuit construed a contract providing for "legal costs and expenses" as including attorney fees, but determined that the district court had properly limited that contractually-based recovery to a breach of contract claim and excluding a patent infringement claim.

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Synthes v. GMReis

Fri, 17 Apr 2009 00:00:00 EDT

Court: Court of Appeals for the Federal Circuit
Decided on: 17 Apr 2009

Panel: Bryson Friedman Schall
Opinion by: Schall
Additional opinions: None filed.

Keywords:

jurisdiction - Foreign company that sent employees to a trade show in the United States with allegedly infringing devices was subject to personal jurisdiction via the long arm statute for a claim of patent infringement despite the travel burden, extensive efforts by the alleged infringer to discourage sales to residents of the United States, and an unknown extent of damages suffered as a result of the allegedly infringing activities.

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Takeda Pharmaceutical v. Doll

Fri, 10 Apr 2009 00:00:00 EDT

Court: Court of Appeals for the Federal Circuit
Decided on: 10 Apr 2009

Panel: Moore Rader Schall
Opinion by: Rader
Additional opinions: Schall (concurrence);

Keywords:

double patenting - Developments in the art up to the filing date of the second application can be relied upon to show that product and process claims are patentably distinct for purposes of obviousness-type double patenting.

standard of review - The court reviews the factual findings underlying a conclusion of double patenting for substantial evidence, but reviews the ultimate legal conclusion regarding double patenting without deference.

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Felix v. American Honda Motor

Fri, 10 Apr 2009 00:00:00 EDT

Court: Court of Appeals for the Federal Circuit
Decided on: 10 Apr 2009

Panel: Friedman Linn Rader
Opinion by: Linn
Additional opinions: None filed.

Keywords:

claim construction - The court agreed with a district court's construction of the term "mounted" to mean "securely affixed or fastened to." The court explicitly and broadly rejected the argument that the term could merely mean that one element is "positioned" relative to another.

claim construction - The court rejected a district court's construction of the term "engaging" to require an "interlocking" limitation, substituting its own construction of the term as "coming together to form a seal." The court included the "seal" limitation because the specification included a single clause describing the "engaging" as "sealingly engaging."

prosecution history estoppel - Rewriting a dependent claim in independent form to include all limitations of the base claim, coupled with cancellation of the base claim, creates a presumption of surrender as to the limitations of the original dependent claim.

prosecution history estoppel - The presumption of prosecution history estoppel attaches when a patentee cancels an independent claim and rewrites a dependent claim in independent form for reasons related to patentability, even if the amendment alone does not succeed in placing the claim in condition for allowance (e.g., if further amendments are made).

prosecution history estoppel - Court rejected an argument that the presumption of surrender was rebutted under the "tangential" requirement of Festo because arguments made during prosecution did not make it "objectively apparent" that another claim element, unrelated to the element that was the subject of the equivalents argument, was the only reason for cancelling a broader original claim.

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Transcore v. Electronic Transaction Consultants

Wed, 08 Apr 2009 00:00:00 EDT

Court: Court of Appeals for the Federal Circuit
Decided on: 08 Apr 2009

Panel: Dyk Gajarsa Moore
Opinion by: Gajarsa
Additional opinions: None filed.

Keywords:

estoppel - The court held that a patentee was estopped from asserting a patent that was procedurally related to, but that had issued after, several patents subject to a covenant not to sue.

evidence - Evidence of patentee's intent not to provide downstream rights to convenantee's customers is irrelevant in a patent exhaustion analysis; the only relevant issue is whether sales between the covenantee and its downstream customer were authorized.

exhaustion - A patentee's unconditional covenant not to sue authorizes sales of otherwise infringing devices by the convenantee for purposes of patent exhaustion.

exhaustion - An agreement that waives a patentee's right to sue for infringement, without restriction or limitation on the types of infringement covered (make, use, sell, offer for sale, import), authorizes all acts that otherwise would constitute infringement, including sales that exhaust the patentee's right to exclude.

exhaustion - The court found an implied license for a patent that was procedurally related to, but that had issued after, several patents subject to a covenant not to sue and determined that the implied license carried the same rights granted in the covenenant not to sue, including the authorization of otherwise infringing sales that exhausted the patentee's rights.

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In re Telular

Fri, 03 Apr 2009 00:00:00 EDT

Court: Court of Appeals for the Federal Circuit
Decided on: 03 Apr 2009

Panel: Mayer Moore Schall
Opinion by: Moore
Additional opinions: None filed.

Keywords:

mandamus - The court denied mandamus relief where the district court weighed competing positions, which were reasonably supported by the facts, in making its determination regarding convenience of the chosen forum.

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Ariad Pharmaceuticals v. Eli Lilly

Fri, 03 Apr 2009 00:00:00 EDT

Court: Court of Appeals for the Federal Circuit
Decided on: 03 Apr 2009

Panel: Linn Moore Prost
Opinion by: Moore
Additional opinions: Linn (concurrence);

Keywords:

inequitable conduct - A patent applicant is justified in expectation that the patent attorneys will determine the legal significance of errors in a patent application and take appropriate action.

written description - Judge Moore, writing for the court, makes it clear that she believes the first paragraph of 35 U.S.C. §112 includes a written description requirement that is separate from the enablement requirement.

written description - The separate written description requirement of 35 U.S.C. §112 is not satisfied for method claims having only a single step where the specification merely suggested the use of three classes of molecules to achieve the desired result.

written description - To satisfy the separate written description requirement of 35 U.S.C. §112 for a method claim reciting a step of "reducing" activity of a natural biological compound, a specification must demonstrate that the inventor possessed the claimed method by sufficiently disclosing molecules capable of achieving the desired "reducing" of activity.

written description - A specification that hypothesizes classes of molecules that are "potentially capable" of achieving a claimed change in biological activity was insufficient to meet the written description requirement where the disclosure amounted to a "vague functional description and an invitation for further research."

written description - While prophetic examples can be sufficient to satisfy the separate written description requirement of the first paragraph of 35 U.S.C. §112, the "mere mention of a desired outcome" is insufficient in the absence of a "descriptive link" between the example and the outcome.

written description - Even though the patent specification adequately described DNA oligonucleotides to the person having ordinary skill in the art, the written description requirement for a generic method claim requiring "reducing activity" of a natural biological compound was not satisfied because the specification merely mentioned a desired outcome of using the described DNA oligonucleotides (binding to the natural compound, thereby reducing its activity) without a "descriptive link" between the oligonucleotides and the reduction in activity.

written description - Although concurring in the opinion because "it is supported by our precedent," Judge Linn wrote separately to express his belief, again, that "our engrafting of a separate written description requirement onto section 112, paragraph 1, is misguided." Judge Linn believes that paragraph 1 requires no more than an enabling written description.

written description - Writing separately, Judge Linn noted that the application of a separate written description requirement, in this case, resulted in the court failing to reach the "important enablement issue" of whether a method claim written so broadly as to cover any method for achieving a particular claimed result can "never be valid, since the specification cannot enable unknown methods."

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In re Kubin

Fri, 03 Apr 2009 00:00:00 EDT

Court: Court of Appeals for the Federal Circuit
Decided on: 03 Apr 2009

Panel: Friedman Linn Rader
Opinion by: Rader
Additional opinions: None filed.

Keywords:

obviousness - The Board of Patent Appeals and Interferences had no obligation to predicate its obviousness finding on factual findings directed to a wherein clause that described an inherent, but heretofore unknown, binding characteristic of a protein encoded by a claimed DNA sequence.

obviousness - Acknowledging the Supreme Court's repudiation of In re Deuel and the Federal Circuit's prohibition against "obvious to try"-based obviousness analyses, the court characterized a claim for a DNA oligonucleotide encoding a protein as "obvious to try," and, indeed, obvious in light of prior art that taught protein, a monoclonal antibody that specifically binds the protein, and suitable cloning techniques for isolating the DNA sequence.

obviousness - Prior art teaching a protein, a monoclonal antibody with specificity for the protein, and techniques for cloning the corresponding gene using the antibody, in combination with a motivation to isolate the gene, renders a claim to the isolated gene obvious as "the product not of innovation but of ordinary skill and common sense."

obviousness - Ringing the KSR death bell for at least one category of classic biotech "inventions," the court explicitly declined to "cabin KSR to the predictable arts" (presumably referring to the mechanical and electrical arts, etc.) and characterized claimed biotechnology "results" (an isolated DNA oligonucleotide) as "profoundly predictable."

obviousness - Disclosing a polypeptide or corresponding polynucleotide sequence for a previously known protein represents a "minor advance in the art" that is not worthy of patent protection.

teaching away - A reference disclosing a murine protein cannot fairly be seen as dissuading one of ordinary skill in the art from combining its teachings with a reference teaching conventional techniques to isolate the corresponding human gene; rather, it "would have aroused a skilled artisan's curioisity to isolate the gene coding for the [human protein]."

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Heeling Sports v. US Furong

Fri, 03 Apr 2009 00:00:00 EDT

Court: Court of Appeals for the Federal Circuit
Decided on: 03 Apr 2009

Panel: Bryson Mayer Plager
Opinion by: per curiam
Additional opinions: None filed.

Keywords:

damages - Remand is appropriate, and indeed necessary, when the district court fails to provide an explanation of how it arrived at a damages award to ensure that, on appeal, the court is reviewing a judgment rather than speculating as to the district court's methodology or making determinations that should have been made by the district court.

standard of review - The court applies a "deferential abuse-of-discretion" standard when reviewing a district court's methodology for calculating damages.

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Digene v. Third Wave Technologies

Wed, 01 Apr 2009 00:00:00 EDT

Court: Court of Appeals for the Federal Circuit
Decided on: 01 Apr 2009

Panel: Lourie Prost Rader
Opinion by: Lourie
Additional opinions: None filed.

Keywords:

claim construction - Claim language, which included three distinguishing characteristics which the patentee described in the specification as "essential to the definition of the invention, supports a construction of the term "HPV 52 DNA" to mean a DNA molecule that is only type 52 HPV and not DNA from another HPV type, including later-discovered HPV types.

claim construction - It is a canon of claim construction that 'a' or 'an' following the phrase 'consisting of' is generally read as meaning 'one.'

claim construction - The term "consisting of" limits the clause for which it acts as a transition to only those elements found in that particular clause; the presence of the overall transitional term "comprising" in the claim does not bleed into and open the clause that includes "consisting of" for inclusion of other elements.

disclaimer - A statement in the prosecution history that a DNA molecule "must be derived from only type 52 HPV DNA" operated as a disclaimer of meanings of "HPV 52 DNA" that would encompass DNA derived from anything but HPV 52 DNA.

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Euclid Chemical Company v. Vector Corrosion Technologies

Wed, 01 Apr 2009 00:00:00 EDT

Court: Court of Appeals for the Federal Circuit
Decided on: 01 Apr 2009

Panel: Linn Lourie Newman
Opinion by: Linn
Additional opinions: Newman (concurrence);

Keywords:

ownership - An assignment document that specifically conveyed ownership of a single listed issued patent, and "any and all divisional applications, continuations, and continuations-in-part," was ambiguous as to whether it effectively transferred ownership of a continuation-in-part application that claimed priority to the listed patent but issued as a patent before the effective date of the assignment.

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Cordis v. Boston Scientific

Tue, 31 Mar 2009 00:00:00 EDT

Court: Court of Appeals for the Federal Circuit
Decided on: 31 Mar 2009

Panel: Dyk Huff Mayer
Opinion by: Dyk
Additional opinions: None filed.

Keywords:

anticipation - A jury can properly find that functional language in a claim is a limitation that bars a finding of anticipation by a reference that discloses all elements of the claim except the functional language.

claim construction - District court properly construed the claim term "thin-walled" to mean "the wall of the tubular member must have little extent from one surface to its opposite at both its first and second diameters."

claim construction - District court properly excluded a claim construction argument from the jury because "the risk of confusing the jury is high when experts opine on claim construction."

disclaimer - The court refused to construe a wherein clause to exclude certain stent designs because an "unclear prosecution history" did not provide a clear an unmistakable disclaimer.

doctrine of equivalents - Expert testimony that circular arcs or rounded corners of the accused device fulfilled patentee's obligation to provide particularized testimony and linking argument with respect to the function, way, result test to support a finding of infringement under the doctrine of equivalents.

extraterritoriality - Under 35 U.S.C. §271(f), the question of whether the accused device had a nexus to the United States is an element of the infringement claim rather than a threshold jurisdictional requirement because Congress has not clearly stated otherwise; As a result, the district court should have dismissed the infringment claim with prejudice after the claimant failed to address the nexus issue in its case-in-chief.

obviousness - Uncontradicted expert testimony that prior art patents "would be unlikely to be combined" to create the claimed invention, and that the patents taught away from the claimed invention, provided substantial evidence to support a jury verdict that the claims were not rendered obvious by the subject prior art patents.

obviousness - Uncontradicted expert testimony that prior art patents described an element of the claim as "potentially harmful" taught away from the claimed invention.

public accessibility - District court properly concluded that an author's distribution of monographs to academic and research colleagues did not render the monographs prior art printed publications because academic norms give rise to an expectation that disclosure to a limited number of individuals will remain confidential.

public accessibility - District court properly concluded that an author's distribution of monographs to commercial entities did not render the monographs prior art printed publications, despite a specific disclaimer of confidentiality obligations by one such entity in a written agreement with the author, because evidence supported the conclusion that there was, nevertheless, an expectation of confidentiality and there was no evidence or suggestion that the expectation was not satisfied.

trial procedure - Raising an alternative claim construction argument for the first time after a jury verdict of infringement is too late, and the argument is waived.

vitiation - Without significant explanation, the court rejected a vitiation argument because "circular arcs" are not antithetical to corners and do not render a "corners" limitation meaningless or effectively eliminate the limitation in its entirety.

written description - Uncontradicted expert testimony that a provisional application provided a sufficient written description of limitations of claims in procedurally-related issued patent was sufficient for jury to find that the written description requirement was satisfied and that the patent was entitled to the provisional application's filing date for priority purposes.

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In re Bryan

Tue, 31 Mar 2009 00:00:00 EDT

Court: Court of Appeals for the Federal Circuit
Decided on: 31 Mar 2009

Panel: Linn Michel Schall
Opinion by: per curiam
Additional opinions: None filed.

Keywords:

obviousness - Printed matter limitations in a claim, in the absence of any new and nonobvious functional relationship between the printed matter and the substrate, cannot render nonobvious a structure defined by the claim.

obviousness - In the board game art, the addition of another deck of playing cards is a predictable use of prior art elements according to their established functions and, as such, is not a patentable distinction.

obviousness - In the board game art, color-coding of game cards is simply the combination of familiar elements according to known methods, yielding a predictable result.

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In re Gleave

Thu, 26 Mar 2009 00:00:00 EDT

Court: Court of Appeals for the Federal Circuit
Decided on: 26 Mar 2009

Panel: Michel Moore Prost
Opinion by: Prost
Additional opinions: None filed.

Keywords:

anticipation - A listing of sense oligonucleotides that mentions the general concept of antisense oligonucleotides anticipates a claim to an antisense of the listed oligonucleotides because the person having ordinary skill in the art has the ability to make the antisense oligonucleotides.

anticipation - The enablement requirement underlying 102(b) does not have a use or utility component.

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Clock Spring v. Wrapmaster

Wed, 25 Mar 2009 00:00:00 EDT

Court: Court of Appeals for the Federal Circuit
Decided on: 25 Mar 2009

Panel: Bryson Dyk Patel
Opinion by: Dyk
Additional opinions: None filed.

Keywords:

experimental use - The factors outlined in Allen Engineering v. Bartell Industries are equally relevant to an experimental use analysis as to a prior commercial sale analysis.

experimental use - The absence of any statement or suggestion in a report summarizing a public demonstration that the purpose of the demonstration was to test durability for patent purposes was fatal to an experimental use argument.

experimental use - The court summarily rejected an argument that a lack of regulatory approval for performance of a claimed method showed the experimental nature of a public demonstration of the method.

public use - The court determined that a public demonstration qualified as a patentability-barring public use by finding required claim elements, which were not part of the publicly demonstrated method, via an obvious variant of the publicly demonstrated method and a deductive reading of a report summarizing the demonstration.

summary judgment - The court affirmed summary judgment of invalidity based on a public use theory, even though the district court relied on an obviousness theory.

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Clearvalue v. Peral River Polymers

Tue, 24 Mar 2009 00:00:00 EDT

Court: Court of Appeals for the Federal Circuit
Decided on: 24 Mar 2009

Panel: Dyk Newman Schall
Opinion by: Schall
Additional opinions: Newman (dissent);

Keywords:

attorney fees - A monthly breakdown of fees by attorney and claim is a relatively undetailed method that falls on the lower end of the spectrum as to acceptable documentation to support an awarded amount of attorney fees.

sanctions - District court did not err in finding sanctionable conduct where patentee, counsel and testifying expert failed to make a disclosure required by Fed. R. Civ. P. 26(a) and that the failure to disclose was not harmless.

sanctions - The district court abused its discretion by failing to consider the ability to pay of counsel held jointly and severally liable for an award of attorney fees.

sanctions - The district court abused its discretion in using its inherent power to issue sanctions to dismiss patentee's claims and enter judgment of non-infringement and invalidity because the court was sanctioning a discovery violation, not broad litigation misconduct.

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