Promote the Progress - Patent case review summaries

Air Turbine Technology v. Atlas Copco

Tue, 12 May 2009 10:57:18 EDT

In Air Turbine Technology v. Atlas Copco (08-1290), the Court of Appeals for the Federal Circuit determined that, under Florida law, a contract providing "legal costs and expenses" to the prevailing party in any litigation arising out of a breach of the contract includes attorney fees. The court reversed the district court on this point, but agreed with the district court that the contractually-based award was limited to expenses related to a breach of contract claim and did not extend to expenses related to a patent infringement claim. Judge Plager, writing in dissent, expressed discontent with the majority's willingness to overrule the district court judge, who "has been interpreting Florida state law for many years." Judge Plager would have affirmed in all respects.

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Richie v. Vast Resources

Wed, 06 May 2009 10:11:58 EDT

In Ritchie v. Vast Resources (08-1528), the Court of Appeals for the Federal Circuit reversed a district court's infringement judgment on grounds that the asserted claims are obvious. Sitting by designation and writing for a unanimous panel, District Judge Richard Posner reasoned that the claims were obvious as reflecting a substitution of one standard grade of material for another. The opinion goes beyond KSR v. Teleflex on this point, citing several pre-KSR cases, including "the venerable Hotchkiss v. Greenwood." In addition to its humorous jabs at the technical subject matter - sex aids, or the "more perspicious term...'sexual devices'," Judge Posner's opinion includes instructive and insightful dicta on several subjects, including claim construction, indefiniteness, and secondary considerations of non-obviouosness.

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Synthes v. GMReis

Tue, 05 May 2009 10:37:54 EDT

In Synthes v. G.M. Reis (08-1279), the Court of Appeals for the Federal Circuit reversed a district court's dismissal of a patent infringement claim for lack of personal jurisdiction. G.M. Reis, a Brazillian company, had sent employees to a trade show in the United States with a small number of allegedly infringing devices for display at the event. The defendant had no other contacts with the forum state or nation that related specifically to the asserted patent. While agreeing with the district court that general jurisdiction was lacking, the Federal Circuit concluded that specific jurisdiction existed because 1) Reis had purposefully directed its activities "at parties in the United States" by carrying a few allegedly infringing devices into the United States (in a suitcase) and displaying the devices at the trade show; 2) the infringement claim arose directly out of the "importation" and displaying activities; and 3) the assertion of personal jurisdiction is reasonable and fair despite the travel burden that would be imposed on the defendant and the apparent minimal amount of monetary damages involved. The interest of the United States in "enforcing the federal patent laws" and in "discouraging injuries that occur within its boundaries" weighed heavily in the court's analysis under the "reasonable and fair" prong.

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Takeda Pharmaceutical v. Doll

Wed, 29 Apr 2009 09:06:55 EDT

In Takeda Pharmaceutical v. Doll (08-1131), the Court of Appeals for the Federal Circuit considered a question of first impression - whether later-developed alternative processes for making a patented product can be relied upon to demonstrate a patentable distinction between product and process claims for purposes of obviousness-type double patenting. Appealing a decision of the Board of Patent Appeals and Interferences stemming from a reexamination proceeding on a process patent, Takeda argued that any evidence of a patentable distinction - even alternative processes developed decades after the date of invention and the application filing date - should be available for consideration. The Office, in contrast, argued that the date of invention should serve to cut-off the availability of such evidence, effectively barring an applicant from pointing to alternative processes developed after the date of invention to show that a process claim is patentably distinct from an existing product claim. The court rejected both approaches, holding instead that "the relevant time frame for determining whether a product and process are 'patentably distinct' should be at the filing date of the secondary application." The court offered a policy-based rationale for its decision, but failed to support it with significant analysis. Judge Schall, writing in dissent, agreed with the Office that the date of invention should be a cut-off date because "the invention date is most commensurate with patent law as a whole and the policy goals relating to obviousness-type double patenting."

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Felix v. American Honda Motor

Mon, 27 Apr 2009 14:01:30 EDT

In Felix v. American Honda Motor Company (08-1367), the Court of Appeals for the Federal Circuit affirmed a district court's grant of summary judgment of no literal infringement and no infringement under the doctrine of equivalents. The court agreed with the district court's handling of a controlling claim construction issue, concluding that the term "mounted" means "securely affixed or fastened to." The court rejected, however, a construction of a peripheral claim term, noting that the district court had improperly applied an "interlocking" limitation to the claim term "engaging." Citing a single clause in the specification ("sealingly engaging"), the court then engrafted its own limitation onto the term, concluding that "engaging" means "coming together to form a seal." The court agreed with the district court that the patentee was barred by prosecution history estoppel as to a critical claim limitation because the applicant had rewritten a dependent claim containing the limitation into independent form and cancelled the original, broader claim that lacked the limitation. The court rejected the patentee's argument that the presumption of surrender was rebutted under the "tangential" prong of Festo because it wasn't objectively apparent that the allegedly tangential rationale for making the amendment was the only reason for canceling the original, broad claim.

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Transcore v. Electronic Transaction Consultants

Fri, 24 Apr 2009 14:02:10 EDT

In Transcore v. Electronic Transaction Consultants (08-1430), the Court of Appeals for the Federal Circuit affirmed a district court's holding that a patentee's covenant not to sue authorized otherwise infringing sales that, as a result, exhausted the patentee's rights vis-a-vis the covenantee's customers. On review, the court viewed the broad an unrestrictive language of the covenant as determinative - the patentee agreed that it would not bring suit "for future infringement." In the absence of a limitation on this authorization, to "making" and "using" for example, the court viewed the covenant as a promise not to sue for any infringing act. As a result, otherwise infringing sales by the covenantee were authorized sales and, as such, operated to exhaust the patentee's rights. The court extended the exhaustion to a later-issued, procedurally-related patent that included broader claims but that was not listed in the covenant. Legal estoppel prevents the patentee from derogating the right it granted, and the covenantee has an implied license to the later patent because "it must be permitted to practice [the later patent]" in order to obtain the benefit of its bargain with the patentee. This implied license is coextensive with the rights granted in the covenant not to sue, rendering the patentee's rights in the later patent exhausted by the same authorized sales.

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In re Telular

Fri, 24 Apr 2009 10:35:35 EDT

In In re Telular Corporation (M-899), the Court of Appeals for the Federal Circuit denied a petition for a writ of mandamus to direct the Eastern District of Texas to transfer a patent infringement case to another district court. After making the obligatory mentions of the extraordinary nature of the writ of mandamus and the associated burden that petitioner must carry, the court explained that the fact that the plaintiff's choice of venue may have no more interest than any other venue does not, alone, necessitate transfer. Perhaps most interesting, the court distinguished In re TS Tech and In re Volkswagen of America, in which the court granted writs of mandamus to direct transfer of infringement actions out of the Eastern District of Texas.

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Heeling Sports v. US Furong

Thu, 23 Apr 2009 16:19:34 EDT

In Heeling Sports Limited v. US Furong International (08-1483), the Court of Appeals for the Federal Circuit remanded a district court's damages and attorney fees award because the judgment failed to explain the methodology used in calculating damages. Rejecting the patentee's argument that the award, which was 10% of the lost profits amount calculated by its expert, "must" have an impermissible relationship to the infringer's profits, the court declined to guess at the methodology used and remanded for either an explanation or reconsideration of the award. The lesson - make sure the district court judge explains, in the judgment, any and all calculations used in determining a damaged award.

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In re Kubin

Thu, 23 Apr 2009 10:10:22 EDT

In In re Kubin (08-1184), the Court of Appeals for the Federal Circuit affirmed a decision of the Board of Patent Appeals and Interferences holding a claim to an isolated DNA oligonucleotide obvious in light of prior art disclosing the protein encoded by the DNA, a monoclonal antibody that specifically binds the protein, and techniques for cloning the DNA using the monoclonal antibody. With a straightforward opinion that reveals a palpable weight that clearly bore on its author, Judge Rader, the court officially transferred one category of classic biotechnology "inventions" - cloned DNA sequences that encode known polypeptides - into the realm of KSR-based obviousness under the labels of predictability and expected success. A peripheral "obvious to try" analysis runs through the court's reasoning, but ultimately yields to an analysis focused on the teachings of the prior art, a skilled artisan's motivation to seek the invention, and the existence of a reasonable expectation of success in finding it in light of the "well-known and reliable nature of the cloning and sequencing techniques in the prior art...." Noticeably absent from the court's analysis is a technical discussion of those techniques and any factors that might cut against their predictability. Also noteworthy, the court did not address a sequence identity limitation of the claim ("at least 80% identical") and, due to its obviousness determination, declined to reach an associated written description issue for broad genus claims based on DNA sequence identity.

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Ariad Pharmaceuticals v. Eli Lilly

Wed, 22 Apr 2009 13:11:43 EDT

In Ariad Pharmaceuticals v. Eli Lilly (08-1248), the Court of Appeals for the Federal Circuit reversed a jury verdict holding a patent infringed and not proven invalid. The court reversed on grounds that the patent was, indeed, invalid because the specification failed to satisfy the separate written description requirement in support of broad method claims, at least one of which required only a single results-based limitation ("reducing NF-kB activity"). In authoring the opinion, Judge Moore revealed herself to be a separatist - believing that the first paragraph of 35 U.S.C. §112 imposes a written description requirement that is separate and distinct from the enablement requirement. Judge Linn concurred in the opinion because it is supported by the court's precedent, but wrote separately to express his belief, again, that §112 imposes no such separate requirement. He explains that the invention of the separate requirement and its application here resulted in the court's failure to reach an important enablement issue: 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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Euclid Chemical Company v. Vector Corrosion Technologies

Mon, 20 Apr 2009 21:41:29 EDT

In Euclid Chemical v. Vector Corrosion Technologies (08-1170), the Court of Appeals for the Federal Circuit rejected a district court's determination that an assignment document that specifically listed a single issued patent and "any and all divisional applications, continuations, and continuations-in-part" unambiguously transferred ownership of a continuation-in-part application that issued as a patent before the effective date of the assignment. On one hand, the court explained, the agreement could be interpreted to convey ownership of the patent through the continuations-in-part catch-all clause. On the other hand, the agreement could be interpreted to exclude the later patent because it specifically listed only a single issued patent. According to the panel majority, the resulting ambiguity required an evaluation of extrinsic evidence of the intent of the parties, which necessitated a remand. Judge Newman, writing in dissent on this point, viewed the listing of only a single issued patent, despite the existence of two at the time of the assignment, as determinative, making remand unnecessary and wasteful. As support for her conclusion that the assignment clearly excluded the later patent, Judge Newman pointed to USPTO assignment and maintenance fee records, which are "not factual issues that require remand" but rather "undisputed matters of public record."

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Digene v. Third Wave Technologies

Sun, 19 Apr 2009 23:08:27 EDT

In Digene v. Third Wave Technologies (08-1242), the Court of Appeals for the Federal Circuit affirmed a district court's judgment of non-infringement on grounds that the lower court had properly analyzed various determinative claim construction issues. Conducting a Phillips-guided de novo claim construction analysis, the court determined that the claim language and specification supported the district court's construction of the term "HPV 52 DNA" to mean a DNA molecule that is only type 52 HPV - and not a molecule from a later-discovered HPV type. Continuing its analysis of the intrinsic evidence, the court found that the prosecution history supported this narrow construction based on a clear disclaimer of claim scope - a statement that the claimed DNA molecule "must be derived from only type 52 HPV DNA." (emphasis added) The court also refused to allow the open transitional term "comprising," which applied to the claim generally, to bleed into an individual claim clause that included "consisting of" as a transitional phrase. That clause, the court explained, is limited to only those elements found in the clause because of the "consisting of" transition - the presence of the "comprising" transition for the claim in general does not open the clause for inclusion of other, non-listed elements. Furthermore, the terms "a" and "an," following the "consisting of" transition, are properly construed as "one."

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Cordis v. Boston Scientific

Fri, 17 Apr 2009 14:13:20 EDT

In Cordis Corporation v. Boston Scientific (08-1003), the Court of Appeals for the Federal Circuit upheld two separate jury verdicts holding patent claims valid and not proven to be invalid. In a lengthy opinion, the court dealt with a series of issues in piecemeal manner, dismissing most with little analysis. The court determined that the district court handled the litigation in a near-perfect manner, noting only "one minor exception." Granting a motion for judgment as a matter of law, the district court had dismissed one of Cordis' infringement claims on grounds that it had no jurisdiction over the claim because the accused device had "no nexus to the United States." The district court made the dismissal without prejudice. On appeal, the court concluded that the dismissal should have been made with prejudice because Cordis failed to present evidence of a nexus in its case-in-chief. Under §271(f), the court explained that the nexus is an element of the infringement claim, not a jurisdictional requirement. The lack of evidence, therefore, required a dismissal with prejudice.

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In re Bryan

Wed, 15 Apr 2009 10:00:10 EDT

In In re Bryan (08-1461), the Court of Appeals for the Federal Circuit affirmed a Board of Patent Appeals and Interferences decision holding claims to a board game obvious. The court rejected an argument that various "printed matter indicia" distinguished the apparatus claims over the prior art because the indicia are "functionally related to the structural elements of his claimed game apparatus." The Board had held that the printed matter cannot render the claimed structure nonobvious. The court agreed, explaining that the claims are not patentable because 1) the distinction over the prior art is non-functional printed matter, and 2) the claims do not require a new physical structure or a new relation of printed matter to physical structure. The court closed with a suggestion that the applicant/appellant might be better served by method claims.

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In re Gleave

Tue, 14 Apr 2009 15:19:23 EDT

In In re Gleave (08-1453), the Court of Appeals for the Federal Circuit affirmed a decision of the Board of Patent Appeals and Interferences holding claims to an antisense oligonucleotide to be anticipated under 35 U.S.C. §102(b) by a reference that listed every applicable sense oligonucleotide and mentioned the general concept of antisense oliogonucleotides. The court explained that the fact that the reference didn't reflect an understanding of the utility of any of the listed sense oligonucleotides - or their antisense counterparts - was irrelevant because the enablement requirement underlying §102(b) does not have a use or utility component. A showing that one of ordinary skill in the art would know how to make the antisense sequences disclosed in the reference was sufficient to establish anticipation. The court distinguished In re Wiggins, in which its predecessor court held that a listing, by name, of compounds having potential or theoretical existence was non-anticipatory of a later claim to one of the compounds. The "key," the Federal Circuit explained in the present case, is the person having ordinary skill in the art's ability to make the claimed compound. In Wiggins, the PHOSITA lacked the requisite ability; here she had it.

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Clock Spring v. Wrapmaster

Tue, 14 Apr 2009 11:44:37 EDT

In Clock Spring v. Wrapmaster (08-1332), the Court of Appeals for the Federal Circuit affirmed a summary judgment of invalidity, albeit on a different theory than that relied on by the district court. Setting an obviousness theory aside, the court examined whether a prior demonstration of the relevant technology qualified as a public use under 35 U.S.C. §102(b). Responding to the patentee's argument that the demonstrated method omitted several elements of the claimed method, the court found the allegedly missing elements - one through an obvious variant of the demonstrated method and another through a deductive reading of a report detailing the public demonstration. As such, the court concluded, the demonstration qualified as a public use and barred patentability. The court also determined that the experimental use exception did not apply because nothing in the report stated or suggested that the demonstration was "designed to test durability for the purposes of the patent application...." Lastly, the court summarily rejected an argument that an absence of regulatory approval for performance of the claimed method showed the experimental nature of the public use.

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Clearvalue v. Peral River Polymers

Mon, 13 Apr 2009 22:43:51 EDT

In Clearvalue v. Pearl River Polymers (07-1487), the Court of Appeals for the Federal Circuit reviewed a multi-faceted sanctions award made by a district court in response to discovery misconduct carried out by the patentee, its counsel, and a testifying expert. The patentee failed to disclose certain test results that had been considered by the expert. Despite clear relevance to a critical issue in the litigation, the patentee and its counsel argued that they believed the results to be irrelevant and privileged information, despite counsel's failure to list the results on a privilege log. Finding the conduct sanctionable, the district court awarded attorney fees, dismissed the patentee's claims, and entered judgment of non-infringement and invalidity. The court held counsel jointly and severally liable for the fees. On appeal, the Federal Circuit affirmed the finding of sanctionable conduct but reduced the amount of the award and removed counsel's liability because of an apparent inability to pay. The court also concluded that the district court abused its discretion in the non-monetary award of dismissal because the sanctionable conduct related to discovery, not general litigation misconduct. Judge Newman agreed with the panel majority that ability to pay should have been considered, but dissented from the conclusion that counsel should be relieved of liability, noting that no evidence or argument pertaining to his alleged inability to pay had been presented.

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In re Siemens Water Technologies

Mon, 13 Apr 2009 17:01:13 EDT

I did not write a review of this order of the court.

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Comcast v. Finisar

Mon, 13 Apr 2009 16:45:15 EDT

I did not write a review of this order of the court.

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Tafas v. Doll

Mon, 13 Apr 2009 10:49:17 EDT

In Tafas v. Doll (08-1352), the Court of Appeals for the Federal Circuit ruled on the validity of several controversial regulations originally proposed by the Patent and Trademark Office more than three years earlier. The court determined that Congress has not granted the Office general substantive rulemaking authority, but determined that USPTO procedural rules are entitled to deference, under Chevron v. Natural Resources Defense Council, with regard to the agency's interpretations of the statute. Under this framework, a two judge panel majority determined that all challenged rules were procedural in nature and, therefore, entitled to Chevron deference. The court held one rule, which would limit an applicant's ability to file continuation applications, invalid as conflicting with the statute. All other rules, including those placing limits on the ability to file Requests for Continued Examination, limiting the number of claims that can be filed under certain circumstances, and requiring the submission of an Examination Support Document in certain circumstances, were held valid as not conflicting with and based on reasonable interpretations of the statute. Judge Bryson, in a concurring opinion, notes the narrow scope of the court's holding on the continuation rule, explaining that the question of the Office's ability to limit the number of serially-filed continuation applications "remains open." Judge Rader explains in an insightful dissent clearly informed by a concern for the fulfillment of the overall purpose of the patent system: "Because the Final Rules drastically change the existing law and alter an inventor's rights and obligations under the Patent Act, they are substantive and the PTO exceeded its statutory rulemaking authority...."

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E-Pass Technologies v. 3COM

Fri, 10 Apr 2009 15:23:55 EDT

In E-Pass Technologies v. 3COM Corporation (08-1144), the Court of Appeals for the Federal Circuit granted the Defendant-Appellant's motion for sanctions, on appeal, after determining that the appeal was frivolous. Noting that "a host of reasons collectively support" the conclusion that the appeal was frivolous, the court's opinion focuses on two. First, the Plaintiff-Appellant failed to explain how the trial court erred or to present clear arguments for reversal. Second, the Plaintiff-Appellant made significant misrepresentations to the court concerning both the record and the law. Importantly, the panel majority held counsel jointly and severally liable for the imposed sanctions, noting that the conclusion of frivolity was partially based on the "frivolous nature of the advocacy." Judge Bryson, writing in dissent, agreed that the Plaintiff-Appellant's brief "fell short of the standards we expect of counsel in this court," but expressed his belief that the "shortfall is not so egregious as to call for the imposition of sanctions."

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Henkel v. Procter and Gamble

Fri, 10 Apr 2009 11:37:04 EDT

In Henkel v. Procter and Gamble (08-1447), the Court of Appeals for the Federal Circuit affirmed a Board decision awarding priority of invention in an interference proceeding. The Board based its decision on inventor testimony "that he appreciated" a comparative dissolution rate limitation, which was required by the only count at issue in the interference, and, as corroboration, a technical report noting that observed results could have been the result of different dissolution rates. On appeal, the court noted that its inquiry is not how panel members would interpret the report, but rather to determine if the Board's interpretation is supported by substantial evidence. "We concllude that it is."

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Larson Manufacturing v. Aluminart Products

Wed, 08 Apr 2009 17:21:22 EDT

In Larson Manufacturing v. Aluminart Products (08-1096), the Court of Appeals for the Federal Circuit reversed a district court's finding that certain withheld documents were non-cumulative of other documents cited to the Patent and Trademark Office during a reexamination proceeding. The district court committed clear error in making its non-cumulative determination because another document, which the patentee had submitted to the Office, disclosed the same elements that formed the basis of the district court's determination that the withheld documents were material to patentability. The Federal Circuit affirmed, however, the district court's determination that withheld Office actions from a procedurally-related application, which contained adverse decisions from another patent examiner, were material to patentability. Judge Schall, writing for the court, provides tour de force treatment of inequitable conduct law and concludes with guidance for the district court that makes it difficult to imagine an inequitable conduct holding on remand. Judge Linn, in a concurring opinion, calls for en banc reconsideration of the test for inferring intent in an inequitable conduct analysis.

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In re Tan

Tue, 07 Apr 2009 17:31:29 EDT

I did not write a review of this order of the court.

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In re Hickman

Tue, 07 Apr 2009 17:28:04 EDT

I did not write a review of this order of the court.

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Black v. CE Soir Lingerie

Tue, 07 Apr 2009 17:20:33 EDT

I did not write a review of this order of the court.

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In re Byerly

Tue, 07 Apr 2009 17:15:11 EDT

I did not write a review of this order of the court.

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Crater v. Lucent Technologies

Tue, 07 Apr 2009 17:12:13 EDT

I did not write a review of this order of the court.

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Crown Packaging Technology v. Rexam Beverage Can

Tue, 07 Apr 2009 12:34:01 EDT

In Crown Packaging Technology v. Rexam Beverage Can (08-1284), the Court of Appeals for the Federal Circuit reversed a district court's grant of summary judgment of non-infringement under the doctrine of equivalents. The court reasoned that a material issue of fact existed for application of the function-way-result test because the defendant argued that a claim element had multiple functions while the patentee's expert stated that the element had only a single function. The court also reversed the district court's dismissal of the defendant's counterclaim of infringement for lack of marking, concluding that marking was not required because the defendant only asserted method claims of a patent that included both method and apparatus claims. Lastly, the court addressed a potential dangling counterclaim jurisdiction issue, concluding that appellate jurisdiction existed despite the lack of an explicit mention of the counterclaim in the district court's final judgment because a decision had been rendered as to every claim - no claim remained outstanding. On this issue, the court explicitly distinguished its recent, difficult to understand decision in iLOR v. Google, in which the court found jurisdiction lacking despite the district court's broad, explicit language dismissing the "action."

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ICU Medical v. Alaris Medical Systems

Mon, 06 Apr 2009 17:00:23 EDT

In ICU Medical v. Alaris Medical Systems (08-1077), the Court of Appeals for the Federal Circuit agreed with a district court's construction of the term "spike" to mean "an elongated structure having a pointed tip for piercing a seal, which tip may be sharp or slightly rounded." The court suggested that this construction reflected the understanding a person of ordinary skill would have of the term after reading the entire patent, and that it did not constitute an impermissible 'importing' of a limitation from the specification. The court offered several factors in support of this distinction, including a lack of suggestions in the specification of other structures, the depiction of the spike in all figures in accordance with the definition, an absence of an indication that the structure - and function - according to the definition is optional, and an absence of any offered intrinsic or extrinsic evidence that supported another 'ordinary meaning' of the term. The court also rejected a claim differentiation argument for a broader meaning based, presumably, solely on the relatively late presentation of the dependent claim that carried the narrow comparative meaning. The court upheld awards of attorney fees and sanctions based, at least in part, on what the district court had labeled a "frivolous [claim] construction."

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