MVS Filewrapper® Blog: 2014 Supreme Court Cases Relating to Intellectual Property

On January 10, 2014 the Supreme Court agreed to review a variety of intellectual property cases in the upcoming session, including two patent cases, a copyright case, and a trademark case (including Lanham Act claim).  A brief overview of these cases is provided and more detail will be available once decisions are entered by the Court.

Limelight Networks, Inc. v. Akamai Technologies, Inc. (U.S., No. 12-786.)

Question Presented to the Supreme Court: Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under § 271(a).

The Federal Circuit dismissed the “single-entity” rule for finding induced infringement of a method/process claim, finding that steps taken by multiple parties can result in induced infringement. The Federal Circuit stated, “To be clear, we hold that all the steps of a claimed method must be performed in order to find induced infringement, but that it is not necessary to prove that all the steps were committed by a single entity.” If the Supreme Court upholds the Federal Circuit’s ruling, a patentee has increased opportunity to assert induced infringement for method/process claims in the marketplace.

Nautilus, Inc., v. Biosig Instruments, Inc. (U.S., No. 13-369)

Question Presented to the Supreme Court: Does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations—so long as the ambiguity is not “insoluble” by a court—defeat the statutory requirement of particular and distinct patent claiming? Does the presumption of validity dilute the requirement of particular and distinct patent claiming?

The Federal Circuit reversed a district court decision that a patent claim to a heart rate monitor was invalid for indefiniteness as a matter of law because of its use of the claim term “spaced relationship” in describing the positioning of two electrodes with respect to each other. The Court held that this claim term was not one that is “insolubly ambiguous” when the intrinsic evidence is considered from the perspective of a person of skill in the art. It considered the functionality of the claimed monitor, as described in the specification, as did the USPTO when the claim was under reexamination. “[T]he claims provide inherent parameters sufficient for a skilled artisan to understand the bounds of ‘spaced relationship.’” Judge Schall concurred in the result but would have used a more narrow analysis, explaining that he would not have used the functional limitation to address the definiteness issue.

 

POM Wonderful LLC v. The Coca-Cola Company, U.S. (No. 12-761)

Question Presented to the Supreme Court: Whether the court of appeals erred in holding that a private party cannot bring a Lanham Act claim challenging a product label regulated under the Food, Drug, and Cosmetic Act.

The case arising out of the 9th Circuit resulted in affirming judgment in favor of Coca-Cola, finding that POM's Lanham Act challenge to Coca-Cola’s “Pomegranate Blueberry” name was barred under the Food Drug and Cosmetic Act (FDCA).  Applicability of Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a) (authorizing actions of false/misleading description of goods), The FDCA and/or state law claims will be addressed.

American Broadcasting Companies, Inc. v. Aereo, Inc. (U.S., No. 13-461)

Question Presented to the Supreme Court: Does a company “publicly perform” a copyrighted television program when it retransmits a broadcast of that program to thousands of paid subscribers over the Internet?

The Second Circuit denied reviewal of a panel decision that online streaming of TV programs to individual subscribers is not an infringing public performance. The panel found that the creation of a copy of a broadcast that is transmitted to individual subscribes failed to establish infringement as streaming “to the public.”

MVS Filewrapper® Blog: Federal Circuit Confirms Invalidity for Overbroad Written Description

Novozymes v. DuPont Nutrition Biosciences involved patent 7,713,723 directed toward recombinant Bacillus alpha-amylase enzymes engineered to have enhanced acid tolerance and heat tolerance.  The patent owner, Plaintiffs-Appellants Novozymes, sued DuPont for infringement.  DuPont defended on grounds of non-infringement and invalidity and countersued for a declaratory judgment that the '723 patent was invalid for failing to satisfying the enablement and written description requirements of 35 U.S.C. § 112.

Novozymes had identified thirty-three Bacillus alpha-amylase amino acid positions as targets for mutagenesis.  Novozymes filed a patent in 2000 for these variants with enhanced stability, specifying that any of the positions could be altered by deletion, addition, or substitution to create variants with improved stability.  Ultimately, the application included a wide range of potential variants without identifying any of the mutations as being preferred. Instead, it only offered two examples including one for the S239W mutation, which was found to be inoperable.

In 2006, DuPont began work on similar alpha-amylase variants and came up with mutations which overlapped with six of the amino acid positions identified in Novozymes' 2000 application.  This included position 239, but the Novozymes application did not disclose the particular substation used by DuPont, S239Q. DuPont obtained a patent (7,541,026) on the variant in 2009.

           

Shortly thereafter, Novozymes filed a continuation application with claims drawn specifically to variants substituted at position 239, which issued in 2009.  The specification of the continuation was essentially the same as the 2000 application.  The day the patent issued, Novozymes sued DuPont for infringement.

The main issue in this case was whether Novozymes satisfied the written description requirement for the claims at issue.  The Court quoted Ariad, which required that the written description "clearly allow person of ordinary skill in the art to recognize that [the invention] invented what is claimed."  The Court also noted that often in cases where a patent's written description disclosed an invention in terms of a broad genus but the claims were directed toward a specific species, there must be some indication to guide a reader towards preferred possibilities out of the group.

Novozyme cited Union Oil, a Federal Circuit case involving a gasoline composition claimed in terms of various chemical and physical properties instead of describing the individual components.  In that case it was decided that anyone having ordinary skill in the art would have produced a composition with those properties which performed the claimed invention and so the written description showed that the inventors possessed the claimed invention at the time of filing.

In contrast, while Novozyme's specification included a number of possible variants and offered some limitations, it did not point out any particular characteristics which would guide a reader to the claimed variant.  The Court determined that the 2000 application did not disclose any variant that satisfied the claims and the specification failed to show that Novozymes possessed such a variant at the time of filing.  The Court ultimately held that no reasonable jury could find that the claims of the '723 patent met the written description requirement of 35 U.S.C. § 112 and the district court properly invalidated the claims.

Chief Judge Radar dissented, stating that he would reverse the grant of judgment as a matter of law and reinstate the jury's verdict.  He noted that the jury had found that a skilled artisan would know how to arrive at the claimed invention by substituting amino acids.  Their decision was based on expert testimony which suggested that finding the claimed variants based on the specification was routine and would only take a week if you had a team of ten scientists making and testing all nineteen amino acid substitutions at each of the thirty-three amino acid positions.

Given the Federal Circuit's recent decision in Wyeth v. Abbott Laboratories, it seems that providing a large number of options of a genus in a patent description could lead to trouble, even if one with skill in the art could arrive at the claimed invention with routine experimentation.  The specification needs to provide some guidance to narrow down the possibilities and enable the reader to arrive at the claimed species without undue experimentation.

           

MVS Filewrapper® Blog: New and Useful - July 10, 2013

·         In Convolve v. Compaq Computer the Federal Circuit affirmed in part the United States District Court for the Southern District of New York ruling that Compaq Computer Corp., Seagate Technology, LLC., and Seagate Technology, Inc. did not misappropriate 11 of 15 alleged trade secrets from Convolve, Inc.  In addition, the Federal Circuit affirmed the district court’s judgment that 8 claims of U.S. Patent No. 4,916,635 (“the ’635 patent”) are invalid.  However, the Federal Circuit vacated the district court’s ruling that Compaq did not infringe several claims of U.S. Patent No. 6,314,473 (“the ’473 patent”), and remanded the case for further proceedings relating to that patent. 

Convolve and Massachusetts Institute of Technology (“MIT”) sued Compaq and Seagate for both trade secret misappropriation and patent infringement, all related to technology developed by Dr. Neil Singer while a graduate student at MIT.  The technology involves seeks in computer hard drives, and minimizing the vibrations created by those seeks—the ’635 patent discloses a method “for generating an input to a system to minimize unwanted dynamics in the system response and to reduce energy consumed by the system during moves,” and an apparatus for shaping commands to a system “to reduce endpoint vibration.” The ’473 patent covers the same type of technology, but relating specifically to data storage devices such as computer disk drives.  The ’473 patent is owned by Convolve, a company owned by Dr. Singer, and the ’635 patent is owned by MIT.  Convolve is the exclusive licensee of MIT software motion control technology called Input Shaping, which Convolve alleges is covered by the trade secrets and patents involved in the case. 

Convolve entered into licensing discussions with Compaq, which included a non-disclosure agreement (NDA) signed by both parties and covering confidential information disclosed between August 13, 1998 and October 15, 2000, but explicitly excluding any information that: (1) the recipient possessed prior to disclosure; (2) was a matter of public knowledge; (3) was received from a third party without a duty of confidentiality attached; (4) was independently developed by the recipient; (5) was disclosed under operation of law; or (6) was disclosed by the recipient with the discloser’s prior written approval.  The NDA further stated that any confidential material or presentations must be particularly identified as confidential.  Compaq sought to include Seagate as the potential designer and manufacturer of hard disk drives incorporating Convolve’s technology to include in Compaq’s computers.  Convolve then disclosed its technology to Compaq and Seagate, but Convolve and Compaq/Seagate never entered into a licensing agreement.

Convolve filed suit alleging breach of contract, misappropriation of trade secrets, patent infringement of the ’473 patent, ’635 patent and breach of good faith and fair dealing.  The district court granted Compaq and Seagate’s motions for summary judgment, dismissing Convolve’s claims of breach of contract, infringement of the asserted claims of the ’473 and ’635 patents, and misappropriation of a subset of the trade secrets asserted against Compaq and Seagate; and granting Seagate’s motion for summary judgment for invalidity of the ’635 patent.  

Regarding the alleged trade secrets, the Federal Circuit upheld the district courts findings and judgment that Compaq and Seagate had not misappropriated 7 of the asserted trade secrets because Convolve disclosed the information in the absence of a written confidentiality follow-up memorandum mandated by the NDA.  The Federal Circuit also affirmed the district court’s ruling that 6 of the asserted trade secrets were either generally known before any disclosure by Convolve or were not used by Seagate following any disclosure by Convolve.  Further, the court rejected Convolves argument that Seagate’s actions constituted trade secret misappropriation under the California Uniform Trade Secret Act notwithstanding the NDA, concluding that where the parties have contracted the limits of their confidential relationship regarding a particular subject matter, one party should not be able to circumvent its contractual obligations or impose new ones over the other via some implied duty of confidentiality.

The Federal Circuit vacated the district court’s grant of summary judgment to Seagate and Compaq for non-infringement of the asserted claims of the ’473 patent, concluding that there were material issues of fact that precluded a grant of summary judgment  as to direct or indirect infringement.  The court also concluded that there was sufficient evidence to preclude summary judgment for induced infringement on the basis of the court’s recent holding in Toshiba Corp. v. Imation Corp. that when an alleged infringer instructs users to use a product in an infringing way, there is sufficient evidence for a jury to find direct infringement.

·         The Federal Circuit in Wyeth v. Abbott Laboratories upheld the U.S. District Court for the District of New Jersey's grant of summary judgment that claims 1 and 2 of U.S. Patent No. 5,516,781 and claim 1 of U.S. Patent No. 5,563,146 are invalid for nonenablement.  The patents relate to the use of rapamycin for the treatment of restenosis.  The patents disclosed use of the rapamycin species sirolimus to reduce thickening of arterial walls.  Wyeth sued the defendants for patent infringement for their products that elute everolimus and zotarolimus.  These compounds fall under the umbrella of rapamycin, but are not mentioned in the specification of the Wyeth patents.

The main issue on appeal was whether practicing the full scope of the claims requires excessive experimentation.  The specification describes assays used to determine whether a potential rapamycin compound exhibits the desired characteristics of immunosuppressive and antirestenotic effects.  Wyeth argued that even though millions of compounds would meet these criteria, one of skill in the art would know that an effective compound had to be small enough to permeate cell membranes.  However, that still leaves tens of thousands of compounds to test and the specification gave no indication of which types of rapamycin compounds would be preferable over others, leaving scientists to synthesize and screen each and every compound. 

While synthesizing and screening compounds is considered routine experimentation, the Court noted in Cephalon, Inc. v. Watson Pharm., Inc. that routine experimentation is "not without bounds."  One indication of excessive experimentation is length of time that would be spent to do the experiments.  Wyeth's expert admitted that it would take technicians weeks to complete each of the assays. 

A final indicator that the invention is not enabled is the unpredictability of the field.  Simply offering a starting point for further research in field like organic chemistry does not properly enable an invention.  Due to the uncertainty, there needs to be more concrete guidance given in the specification in order to avoid undue experimentation.

Ultimately, the Federal Circuit determined that synthesizing and screening tens of thousands of candidate compounds constituted undue experimentation.  While they did not draw a definitive line between routine experimentation and undue experimentation, the Court did provide some guidance on what could be considered excessive experimentation in organic chemistry.

·         In Commil USA v. Cisco Systems, Cisco Systems appealed a district court final judgment in favor of Commil, asserting that the district court gave erroneous jury instructions, improperly precluded Cisco from presenting evidence of good-faith belief of invalidity, and abused its discretion by granting a new partial trial.  On appeal, the Federal Circuit found that the district court gave erroneous instructions to the jury with respect to indirect infringement and that evidence of a good-faith belief of invalidity may negate the intent required to show induced infringement.  The Court determined that the district court did not err in granting the partial new trial.

In regard to the issue of indirect or induced infringement, the jury had been instructed in part that to show induced infringement, "Cisco knew or should have known that its actions would induce actual infringement."  In light of the Supreme Court's decision in Global-Tech Applicances, Inc. v. SEB S.A., which held that induced infringement "requires knowledge that the induced acts constitute patent infringement," a finding of induced infringement may no longer be based on recklessness or negligence.  As such, the Federal Circuit concluded that the jury instructions were erroneous as a matter of law.  The Court found that this erroneous instruction could have changed the result of the trial.  Due to the prejudicial effect of the jury instruction, the Court vacated the verdict of induced infringement and remanded for a new trial. 

With respect to invalidity, Cisco had provided evidence to support its good-faith belief that the patent at issue was invalid.  However, the district court granted Commil's motion in limine to exclude that evidence.  Federal Circuit case law has shown that evidence of a good-faith belief of non-infringement tends to show that an accused inducer of infringement lacked the requisite intent.  Similarly, the Court in this case found that a good-faith belief of invalidity serves the same purpose as a good-faith belief of non-infringement as far as specific intent is concerned.  The Court noted that "one could be aware of a patent and induce another to perform the steps of the patent claim, but have a good-faith belief that the patent is not valid.  Under those circumstances, it can hardly be said that the alleged inducer intended to induce infringement."  The Federal Circuit ultimately held that a good-faith belief of invalidity can negate the specific intent required for induced infringement.

Judge Newman dissented with regard to this portion of the ruling, finding that the Court had changed the law of induced infringement.  She stated that a good-faith belief in invalidity does not avoid liability for infringement because infringement in fact does not depend on the belief of the accused infringer.  Judge Newman relied on tort theory to support her position that "A mistake of law, even if made in good faith, does not absolve a tortfeasor."

With respect to the decision to grant a partial new trial on the issues of indirect infringement and damages, the Federal Circuit determined that it did not violate the Seventh Amendment because the issues were distinct and separable.  The jury in the partial trial was asked to determine whether Cisco possessed a good-faith belief of invalidity, but not whether the patent was in fact invalid.  Cisco argued that these issues are intertwined, but the Court determined that they could be separate issues. 

Judge O'Malley disagreed with this part of the decision, believing that Cisco was deprived of its right to a jury trial under the Seventh Amendment.  She noted that because statements by Cisco's counsel were prejudicial towards the Jewish inventors of Commil, the entire trial was affected.  As a result, Commil was entitled to an entire retrial of all of the issues instead of a partial new trial.

MVS Filewrapper® Blog: New and Useful - February 21, 2013

·         In U.S. Polo Assoc., Inc. v. PRL USA Holdings, Inc., the Second Circuit Court of Appeals found that the natural zone of expansion doctrine did not permit the United States Polo Association (“USPA”) to expand its offerings into a line of fragrances and affirmed the district court’s entry of a permanent injunction prohibiting such use.  The USPA filed a declaratory judgment to approve use of its Double Horseman mark, accompanied by the words “U.S. POLO ASSN.,” “USPA,” and/or “1890,” in the sale of men’s fragrances.  PRL counterclaimed, seeking entry of a permanent injunction precluding such use—which the district court granted.  USPA’s argument was centered on the, so called, natural zone of expansion doctrine.  USPA argued that its history of selling branded apparel provided it with the right to expand into related markets, i.e., apparel sales give rise to the right to expand into fragrances.  The district court gave little weight to USPA’s survey and found that PRL’s survey gave strong evidence of a likelihood of confusion.  The Second Circuit found that the district court’s holdings regarding the survey evidence did not abuse its discretion and that the previous litigation and USPA’s history did not support USPA’s argued natural right to expand.

·         In Function Media, L.L.C. v. Google, Inc., the Federal Circuit Court of Appeals held that the denial of a pre-trial motion for summary judgment of non-infringement is not sufficient to show that the district court delegated claim construction to the jury.  Function Media (“FM”) sued Google for infringement of three patents directed at “facilitate[ing] advertising on multiple advertising outlets such as newspapers and websites.”  Slip op. at p. 2.  The district court held that one patent was invalid for being indefinite “because the specification did not disclose sufficient structure for its sole independent claim’s means plus function term ‘means for transmitting.’”  Id. at pp. 5–6 (citations omitted).  A jury found the asserted claims in other two patents invalid and not infringed.  FM moved for judgment as a matter of law (“JMOL”) that the claims were not invalid, which the district court granted with respect to four claims.  This did not alter the jury verdict of non-infringement. 

FM appealed on a number of grounds, including an assertion that the district court gave the claim interpretation to the jury.  The argument was based on the fact that the district court denied Google’s motion for summary judgment of non-infringement. FM argued that the denial of summary judgment demonstrated that there were unresolved issues regarding claim scope, which were subsequently left to the jury rather than construed by the court.  The Federal Circuit did not agree that the district court improperly gave the claim interpretation to the jury, the Federal Circuit stated, “We hold that the denial of a pre-trial motion for summary judgment of non-infringement does not, by itself, show that the district court delegated claim construction to the jury.  This is especially true where, as here, the jury was instructed to apply the district court's claim constructions.”  Id. at pp. 21–22. 

·         In Cephalon, Inc. v. Watson Pharma., Inc. , the Federal Circuit Court of Appeals reversed a district court’s holding of invalidity for lack of enablement stating, “Watson failed as a matter of law to show with clear and convincing evidence that Cephalon’s patents require undue experimentation to practice the invention.”  Slip op. at p. 2.  Throughout the discussion of enablement, the Federal Circuit highlighted that the burden is on Watson to show lack of enablement—undue experimentation—and to do so by clear and convincing evidence.  The district court’s analysis was that, “the disclosures lacked teachings directed to formulating and co-administering two separate dosage forms . . . to achieve an effervescent reaction.  The lack of disclosure of such methods of co-administration would, according to the court, necessitate undue experimentation to practice the invention.”  Id. at p. 11 (citations omitted).  Watson merely provided “[u] nsubstantiated statements indicating that experimentation would be ‘difficult’ and ‘complicated.’”  Id. at pp. 15–16.  The Federal Circuit found that these statements did not meet the standard of clear and convincing evidence to establish undue burden as opposed to reasonable experimentation.  As such, the Federal Circuit reversed the district court’s holding of invalidity and remanded.

·         The United States Patent and Trademark Office published the final rules and guidelines governing First-Inventor-to-File.  (http://www.uspto.gov/news/pr/2013/13-10.jsp)  There were two separate Federal Register publications and each is briefly discussed below.  A more thorough discussion of each is forthcoming.

o   Changes to Implement First Inventor to File Provisions of Leahy-Smith America Invents Act

This publication sets forth the changes that will be necessary to implement the First-Inventor-to-File standards.  It addresses changes regarding each of the following:

§  The addition of definitions in the AIA to the rules of practice;

§  The submission of affidavits or declarations regarding:  disclosures in priority disputes under the first-to-file standards and prior public disclosures;

§  Standards regarding a U.S. Patent or Published Applications having a prior art effect as of the filing date of a foreign priority application;

§  Elimination of the provisions regarding statutory invention registrations; and

§  Adoption of requirements for nonprovisional applications filed on or after March 16, 2013, that claim priority to or the benefit of the filing date of an application filed prior to March 16, 2013.

o   Examination Guidelines for Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act

This publication sets forth the changes the changes to the examination guidelines under the First-Inventor-to-File standard.  The publication is also meant to clarify and respond to questions provided during the public comment period regarding whether there is a requirement that the mode of disclosure by an inventor or joint inventor be the same as the mode of disclosure of an intervening disclosure.

Federal Circuit hears arguments in In re Kubin; what will be obvious in biotechnology?

Thursday, the Federal Circuit held oral arguments in In re Kubin, a biotechnology case involving a patent over a gene sequence in humans, and specifically whether the claims were obvious.  This was the first precedential decision by the Board of Patent Appeals and Interferences on the issue of obviousness in this field after KSR, so how the Federal Circuit comes out on the issue has the potential to greatly affect examination of biotechnology applications at the USPTOWe previously covered the Board's decision in the case in July.

The key issues addressed in oral arguments were whether the prior art, particularly Valiente (a reference teaching a similar protein in mice), rendered the claimed invention obvious, and whether the disclosure of essentially one sequence was sufficient to provide written description for all sequences with 80% similarity that still retain the function of the original gene.  Oral argument focused largely on the obviousness issue.  Many attended the arguments, including representatives from our office.

Click below for more detail of the arguments in In re Kubin.

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General disclosure in prior art not enabling for specific pharmaceutical compound's use in treatment

In a decision last week, the Federal Circuit affirmed a district court's holding that a prior art patent was not enabling and thus did not anticipate the patent-in-suit.  Applying the In re Wands factors, the district court held undue experimentation would be required in order to produce the claimed invention based on the prior art's disclosure.

The Federal Circuit affirmed, and observed the asserted prior art was broad and general without sufficient direction to practice the claimed invention.  Moreover, the asserted prior art provided no working examples of the invention claimed in the patent-in-suit.  Finally, the court held the district court correctly placed the burden of proving non-enablement on the patentee, given the prior art reference was an issued U.S. Patent, but it was not necessary for the district court to specifically articulate its burden-shifting framework.

More on Impax Labs, Inc. v. Aventis Pharms Inc., after the jump.

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Federal Circuit: And can mean or, if it makes the claim make sense

In a decision last week, the Federal Circuit affirmed a district court's permanent injunction against a defendant to prevent infringement of a patent.  The district court held the patent not invalid and infringed, based in part on a claim construction that construed the word "and" to mean "or."  Specifically, based on the specification and other claims, the court determined such a construction was consistent with the intrinsic evidence.  The court also rejected each of the defendant's affirmative defenses.

The Federal Circuit affirmed.  Turning first to claim construction, the court held "and" can be interpreted to mean "or" in claim language when the specification warrants that construction.  In this case, interpreting "and" as requiring both elements would have rendered some dependent claims meaningless, as well as excluded the preferred embodiment from the claims.  The court also affirmed the rejection of the affirmative defenses of inequitable conduct, obviousness, enablement.  Notably, in discussing the obviousness issue, the court stated:  "a flexible TSM test remains the primary guarantor against a non-statutory hindsight analysis such as occurred in this case."  It will be interesting to see whether the non-TSM grounds for an obviousness rejection outlined in the USPTO's examination guidelines will survive scrutiny by the Federal Circuit.

More detail of Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc. after the jump.

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Federal Circuit reiterates that full scope of claim must be enabled to meet enablement requirement

In a decision last week, the Federal Circuit affirmed a district court's decision holding several claims of two patents invalid for lack of enablement.  The district court held that while a portion of the scope of the claims was enabled, the full breadth of the claims were not, and as a result, the claims did not meet the enablement requirement of § 112.

The Federal Circuit affirmed.  The court stated that even if the claims were enabled for one embodiment, they were not enabled for a second embodiment also falling within the claim scope.  The court analogized another recent case with similar facts where although two embodiments were covered by the claims, only one was enabled by the specification, leading to a conclusion of invalidity.

The patentee's case was also not saved by the proffered expert testimony, as the plaintiff's expert was an expert in only one of the two applicable fields, and as a result could not opine competently regarding the enablement of the claims in the second field.  As such, because the full scope of the claims was not enabled, the court affirmed the summary judgment of no enablement.

More detail of Sitrick v. Dreamworks, LLC after the jump.

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Paper posted on public FTP site not necessarily printed publication; summary judgment reversed

In a decision this week, the Federal Circuit vacated and remanded the district court's determination that the plaintiff's patents-in-suit were invalid as anticipated by another paper that was publicly available via the patentee's FTP site before the critical date for the span of one week, finding genuine issues of material fact as to whether the paper was "publicly accessible" as required by 35 U.S.C. § 102(b) as of the critical date of the patents.  The court, however, affirmed the grant of summary judgment by finding one patent invalid as anticipated by the patentee's own previous paper, as that paper was sufficiently enabled to constitute prior art.

More detail of SRI Int'l, Inc. v. Internet Security Sys., Inc. after the jump.

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Claims to using product made via another claim are dependent claims, noninfringement affirmed

In a battle between two agricultural heavyweights, Monsanto and Syngenta, the Federal Circuit affirmed a district court's ruling that Syngenta did not infringe two Monsanto patents and that a third was invalid for lack of enablement.  The patents relate to tolerance to the herbicide glyphosate.

The court affirmed the district court's claim construction, noting that certain claims directed toward manipulating a plant obtained by the process in another claim were properly considered dependent claims.  Because it was undisputed that Monsanto performed the three claimed steps to produce the original plant and Syngenta only performed the final step in the dependent claim, Syngenta was not liable for direct infringement under § 271(a).  Also, because Monsanto had performed the three initial steps before the patent issued, there could be no infringement under § 271(g).

With regard to enablement, the court affirmed the invalidity of claims directed toward a chimeric gene that functions "in plant cells."  As of the patent's priority date, transformation of monocots had not yet been successfully completed, and as a result, the specification did not enable the gene to function in all plant cells.  Accordingly, the invalidity of those claims was affirmed.

More detail of Monsanto Co. v. Syngenta Seeds, Inc. after the jump.

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