Filewrapper® | A patent, trademark, and copyright law blog by MVS - Means-plus-function

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

Wed, 10 Apr 2013 10:39:00-0500

· In In re Hubbell the Federal Circuit confirmed the rejection of all of the pending claims in an application, filed with Jeffrey Hubbell, Jason Schense, Andreas Zisch, and Heike Hall as named inventors. The invention disclosed in the application was based on research performed while all of the named inventors were at California Institute of Technology (CalTech). As a result, the application is assigned to CalTech. Approximately five years before the CalTech application was filed, Hubbell left CalTech for Eidgenossische Technische Hochschule Zurich (ETHZ). A second application filed based on research Hubbell and Schense conducted at ETHZ was filed less than a year before the CalTech application, which is assigned to ETHZ and Zurich University. Aside from Hubbell and Schense, the two patents do not have identical inventive entities, or common owners or assignees. The ETHZ application, which issued as a U.S. patent in 2009, was used as the basis for an obviousness-type double patenting rejection, which was upheld by the Board of Patent Appeals and Interferences.

Hubbell appealed the Board decision, arguing that the judicially created obviousness-type double patenting rejection should not apply where an application and a conflicting patent share common inventors, but do not have identical inventive entities, were never commonly owned, and are not subject to a joint research agreement. Alternatively, Hubbell argued that should the court find the obviousness-type double patenting rejection is applicable, he should either be allowed to file a terminal disclaimer as an equitable measure, or the court should employ a two-way obviousness analysis for the rejected claims.

The Federal Circuit affirmed the Board, finding that both the MPEP and Federal Circuit precedent supported application of the obviousness-type double patenting rejection to cases where an application and a conflicting patent have one or more inventors in common but the inventive entities are not identical and the applications were never commonly owned. The court rejected Hubbell’s argument that the case precedent only involved applications that were once commonly owned by the same entity, and did not apply to his application because CalTech never controlled the ownership of the second application. The court based its decision on the underlying concerns over the possibility of harassment by multiple assignees that exists when issued patents lack common ownership—if the claims of the ETHZ application were to issue, a potential infringer could be subject to suit from both CalTech and ETHZ. The court also rejected Hubbell’s argument that a terminal disclaimer should be permitted, based on the fact that there is no statutory basis for doing so. Finally, the court affirmed the Board’s rejection of Hubbell’s request to have the two-way obviousness analysis applied in the case. The court concluded that Hubbell’s application did not meet the requirements to apply the narrow exception to the general rule of the one-way test.

Judge Newman dissented in the opinion, concluding that the majority’s decision is a “flawed ruling on incorrect law.” Specifically, Judge Newman concluded that because there are different inventive entities and that there is not common ownership, obviousness-type double patenting does not apply, but if there indeed is obviousness-type double patenting, then a terminal disclaimer is necessarily available. Judge Newman took issue with the circularity of the majority opinion—a terminal disclaimer is not available because there is not common ownership, yet if there is not common ownership or common inventorship, there cannot be double patenting.

· In Dawson v. Dawson, the Federal Circuit upheld the USPTO Board of Patent Appeals and Interferences (BPAI) decision determining that an earlier-filed patent application for topically treating and preventing infections of the eye, naming Dr. Chandler Dawson as inventor, had priority over a later-filed patent application, also naming Dr. Chandler Dawson as inventor. The earlier-filed application was submitted by Dr. Dawson and Dr. Lyle Bowman and assigned to InSite Vision Incorporated. The University of California San Francisco (UCSF) filed the later-filed application, without the involvement of Dr. Dawson but naming Dr. Dawson as the sole inventor, for the sole purpose of instituting an interference. The BPAI determined that UCSF had not met its burden to show that Dr. Dawson had conceived of the invention prior to his collaboration with Dr. Bowman.

On appeal to the Federal Circuit, UCSF asserted that the invention embodied in the InSite application was conceived of by Dr. Dawson while he was employed at UCSF and before he joined InSite, and therefore priority of the invention should rest in the UCSF later-filed application. UCSF argued that the conception requirement was met by the time Dr. Dawson made a presentation at a WHO conference, as demonstrated by documents produced from that conference. UCSF argued that even though the conference documents lacked the particular carrier and concentrations recited in the claims, conception was achieved because the documents showed that Dr. Dawson had formed the idea that of topical use of azithromycin would be effective for treating eye infections, and that the subsequent preparation of an effective ointment was merely corroboration of the idea.

The court rejected UCSF’s arguments, reasoning that the WHO documents themselves demonstrated the lack of conception because they constituted “a ‘preliminary’ statement about a ‘possibility’ or ‘potential use,’ alongside a recommendation for continued work and a ‘report back’ in the future.” The court concluded that this fell short of the requirement for a definite and permanent idea of the complete and operative invention, as it is to be applied in practice, as set out in Hybritech Inc. v. Monoclonal Antibodies, Inc. The court further held that UCSF failed to make a sufficient showing with respect to the individual interference counts—the specific concentrations, the suspending agent, or the claimed “amount effective to treat infection in a tissue of the eye.” Finally, the court rejected UCSF’s argument that the BPAI had improperly required a showing of reduction to practice in order to prove conception, concluding that UCSF’s argument was based on an erroneous view of what is needed to prove conception, and holding that “there is a critical difference between conceiving a way to make an idea operative and knowing that a completed invention will work for its intended purpose.”

Judge Reyna dissented in the opinion, concluding that the record was sufficient to demonstrate that Dr. Dawson possessed a definite and permanent idea of his complete and operative invention when he was employed by UCSF, not InSite, and therefore UCSF had demonstrated prior conception.

· In Saffran v. Johnson &Johnson, Dr. Bruce N. Saffran (Saffran) sued Johnson & Johnson and Cordis Corporation (collectively “J&J”), alleging that J&J infringed a number of claims in Saffran’s U.S. patent. The patent involved methods and apparatus that would sequester macromolecules within a defined area, for example a sheet that could be wrapped around a bone fracture that would keep growth factors from diffusing out of the fractured area. The claims of the patent were also drawn to the additional capability of controlled release of a substance incorporated into the apparatus via a “means for release.” The alleged infringing device was a drug-eluting stent comprising a metallic mesh with a microscopic layer of polymer that coats the surface of each strut, the polymer being mixed with a macromolecular drug that would gradually escape through gaps in the polymer matrix. The U.S. District Court for the Eastern District of Texas held that J&J infringed the patent based on its construction of the terms “device” and “release means”. J&J appealed to the Federal Circuit, arguing that the district courts construction of the two terms was erroneous, and that a proper construction precluded infringement.

On appeal, the Federal Circuit construed the term “device”—as used in the preamble and body of independent claim 1, in the bodies of independent claims 8 and 15, and at least by reference in each of the dependent claims—to mean a continuous sheet and to exclude stents having open mesh holes. The court came to this conclusion based on the prosecution history, during which the patentee sought to distinguish the prior art by asserting that the device used in the invention is a sheet rather than the structure disclosed in the prior art reference. The court confirmed that this corresponded to the disclosure in the specification, and Saffran’s argument that the specification contained alternative embodiments did not persuade the court otherwise.

The court confirmed that “[u]nder § 112, ¶ 6, the question is not what structures a person of ordinary skill in the art would know are capable of performing a given function, but what structures are specifically disclosed and tied to that function in the specification” and “a patentee cannot rely on claim differentiation to broaden a means-plus-function limitation beyond those structures specifically disclosed in the specification.” Thus, the court construed “release means” to only include treating material attached to the substantially impermeable sheet via hydrolyzable bonds or an equivalent thereof.

Based on its construction of “device” and “release means” the court concluded that J&J did not infringe the asserted Saffran patent.

MVS Filewrapper® Blog: Federal Circuit affirms importance of secondary indicia of non-obviousness

Fri, 05 Apr 2013 11:39:00-0500

The Federal Circuit has recently decided the case of Power Integrations, Inc. v. Fairchild Semiconductor International, Inc. Power Integrations, Inc. (Power) sued Fairchild Semiconductor International, Inc. (Fairchild) in the U.S. District Court for the District of Delaware, alleging infringement of Power’s four patents covering chargers for mobile phones. In a bifurcated trial, the claims of the patents were found valid, and Fairchild was found to have willfully infringed and assessed $33 million in damages, which was subsequently remitted to $12 million. Fairchild appealed to the Federal Circuit, arguing that the district court’s claim construction of two terms—“frequency variation signal” and “soft start circuit”—was erroneous, and that the district court’s denial of its JMOL of non-obviousness was in error. Power cross-appealed the district court’s determination that the jury’s original damages award of was contrary to law, seeking the original $33 million in damages.

Claim Construction

Fairchild argued on appeal that the district court’s construction of the “frequency variation signal” language improperly imported limitations from the preferred embodiments provided in the patent specification. Fairchild sought a much broader construction, based on what it argued was the plain and ordinary meaning, thereby eliminating any need to turn to the disclosures of the patent. The Federal Circuit concluded that the testimony of Power’s expert that there was no plain and ordinary meaning and in the absence of contrary evidence from Fairchild, the expert opinion was dispositive. The court then confirmed the district court’s reading of the specification, ultimately concluding the construction of “frequency variation signal” was proper.

Fairchild also argued that the district court’s construction of “soft start circuit” as a means-plus-function limitation was erroneous because the claim did not use the term “means” and provided sufficient structure to preclude application of 35 U.S.C. § 112, paragraph 6. The court concluded that the recitation of a “circuit” in conjunction with a sufficiently definite structure for performing the identified function was adequate to bar means-plus-function claiming.

Obviousness

With respect to obviousness, Fairchild argued that the Power patents were obvious in light of the prior art, because the only difference compared to the patents-in-suit was that the prior art included erasable programmable read only memory (EPROM) absent from the patents and it would have been obvious to a person of skill in the art to simply remove the EPROM. The court found that a person of skill in the art would understand that the EPROM in the prior art was used to achieve a different result than, and was thus unnecessary for, the “frequency-jittering” achieved by the claimed invention of the patent-in-suit. However, the court also found that there was substantial evidence of “objective considerations of non-obviousness”—that is, secondary indicia—to support the jury’s verdict that Power’s patent would not have been obvious to the ordinarily skilled artisan. Specifically, the court focused on:

(1) testimony that the EPROM in the prior art added expense and imposed design constraints as “a good indication that removing the EPROM provided otherwise unexpected benefits”;

(2) testimony that “each and every one of [the prior art] references . . . included [EP]ROMs,”

(3) more than 11 years having passed between issuance of the obviousness reference and the filing of the patent-in-suit without anyone disclosing removing the EPROMs;

(4) testimony that no one in the industry was able to come up with the patented invention;

(5) evidence of commercial success; and significantly (6) Fairchild competed with Power by reverse engineering and copying of Power Integrations’ products.

The court concluded that this evidence was sufficient to support the verdict of non-obviousness.

Damages

The court also considered the “underlying question [of] whether Power Integrations is entitled to compensatory damages for injury caused by infringing activity that occurred outside the territory of the United States.” The court answered that question with an emphatic “No.”

Finally, the court considered whether the district court improperly precluded Power from introducing evidence of price erosion that occurred prior to notifying Fairchild of its infringing activity. The court held that the district court’s decision to exclude the evidence was incorrect because “a price erosion analysis relating to damages arising from post-notice infringement must measure price changes against infringement-free market conditions, and thus the proper starting point of such a price erosion analysis is the date of first infringement.”

The court remanded the case for the district court to construe those claims and determine what effects the new constructions have on validity and infringement, and for a new trial on damages resulting from Fairchild’s direct infringement.

MVS Filewrapper® Blog: New and Useful - April 5, 2013

Fri, 05 Apr 2013 08:42:00-0500

· In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc. the Federal Circuit clarified several points relating to claim construction, determinations of non-obviousness, and calculation of damages. The court confirmed that claiming a “circuit” in conjunction with a sufficiently definite structure for performing the identified function is adequate to bar means-plus-function claiming. The court also confirmed that secondary considerations of non-obviousness could constitute evidence sufficient to support a finding of non-obviousness. Finally, the court held that plaintiffs are not entitled to compensatory damages for injury caused by infringing activity that occurred outside the territory of the United States, regardless of any foreseeability of world-wide damages. A more in-depth analysis of this case will be posted shortly.

· In Rubin v. The General Hospital Corp., Dr. Berish Y. Rubin and Dr. Sylvia L. Anderson (collectively, Rubin) sued The General Hospital Corporation (GH Corp.) in the U.S. District Court for the District of Massachusetts requesting correction of inventorship of two patents assigned to GH Corp., or alternatively invalidation of the two patents. Rubin alleged that the inventors named in the patents used confidential information—from a manuscript and abstract submitted by Rubin to the American Journal of Human Genetics—to complete the inventions described and claimed in the patents. The district court granted summary judgment to GH Corp.

The Federal Circuit affirmed the grant of summary judgment, reasoning that the dispute was fundamentally a question of priority of the invention. The court ultimately agreed with the district court, concluding that Rubin and Anderson could not be added as joint inventors or be substituted for the named inventors of the patents because they did not meet the requirements of 35 U.S.C. § 116 for joint invention or §256 for correction of inventorship, and that the issue of priority is appropriately determined by PTO interference proceedings.

· The U.S. District Court for the Southern District of N.Y. has handed down its decision in Capitol Records, llc. V. ReDigi Inc. ReDigi considers itself the "world's first and only online marketplace for digital used music." ReDigi's website "invites users to sell their legally acquired digital music files, and buy used digital music from others at a fraction of the price currently available on iTunes." ReDigi's website sold various records belonging to Capitol Records. Capitol Records brought an action against ReDigi, alleging direct copyright infringement, inducement of copyright infringement, contributory and vicarious copyright infringement. In its defense, ReDigi asserted that the “first sale” doctrine precluded a finding of copyright infringement. The district court disagreed, however, holding that the very nature of transferring digital files over the internet constituted copyright infringement because in order to transfer a file, a copy of the file must be made on the transferring computer. Because the “first sale” doctrine does not protect against reproduction of copyrighted material, ReDigi could not successfully assert the defense for the present action.

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

Thu, 21 Feb 2013 08:40:00-0500

· 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.

Use of "mechanism" in claim without more may result in means-plus-function interpretation

Thu, 18 Dec 2008 20:10:00-0500

In a decision Monday, the Federal Circuit affirmed a district court's claim construction and related judgment of noninfringement. The decision focused on the issue of claim construction in means plus function claims. The critical limitation used the term "mechanism" without any additional structural elements, and as a result the district court construed it to be a means-plus-function claim. The Federal Circuit affirmed, noting in the past it had held limitations with the term "mechanism" without additional modifiers to be means-plus-function limitations. Because it was undisputed the accused device did not have the corresponding structure in the specification or its structural equivalent, the court affirmed the district court's grant of summary judgment.

More detail of Welker Bearing Co. v. PHD, Inc. after the jump.

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Federal Circuit reaffirms anticipatory reference must have all elements as arranged in the claim

Fri, 31 Oct 2008 21:00:00-0500

In a recent decision, the Federal Circuit affirmed a district court's finding of indefiniteness but reversed the district court's holding of anticipation of other claims. The district court held the means-plus-function limitations did not have corresponding structure disclosed in the specification, rendering them indefinite, and that the combination of two examples in a prior art publication anticipated the remaining asserted claims.

The Federal Circuit agreed the means-plus-function limitations were indefinite. The limitations were computer-implemented, which means to be definite, the specification must disclose "more than simply a general purpose computer or microprocessor," but instead must disclose "the special purpose computer programmed to perform the disclosed algorithm." There was no such disclosure here, so the Federal Circuit held the claims were correctly held indefinite.

Regarding anticipation, however, the court reaffirmed its previous cases holding in order to anticipate, it is not enough for all elements of the claim to be disclosed in a single reference. All the elements must also be disclosed as arranged in the claim. Here, the claim elements were spread across two different examples given in the allegedly anticipatory reference, so the Federal Circuit reversed the district court's summary judgment of anticipation because the reference did not disclose the elements as they were arranged in the claim.

More detail of Net MoneyIN, Inc. v. VeriSign, Inc. after the jump.

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Remittitur without new trial requires legal error, not error as a matter of law

Wed, 29 Oct 2008 09:44:00-0500

In a recent decision, the Federal Circuit reversed a district court's reduction of the jury's damages award, remanding the case for a new trial on damages, and affirmed the jury's verdict of willful infringement and the district court's award of attorney fees under § 285.

The district court held there was insufficient evidence as a matter of law to support the jury's damages award, so it reduced the award from over $1 million down to just over $50,000. However, the court did not offer the patentee the option of a new trial. The Federal Circuit held this violated the Seventh Amendment, which requires a new trial unless the award was based on legal error, not present here.

Further, the Federal Circuit held the district court's jury instruction on the issue of actual notice under § 287 was legally incorrect, as it improperly foreclosed a finding of actual notice before the discovery of the defendant's infringement. As a result, the Federal Circuit remanded the case for a new trial on damages to address both the amount and the date from which damages should be calculated.

More detail of Minks v. Polaris Indus., Inc. after the jump.

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When factual inquiries underlying obviousness determination disputed, summary judgment improper

Thu, 25 Sep 2008 10:57:00-0500

In a decision Friday, the Federal Circuit affirmed a district court's summary judgment of no anticipation, no invalidity for failure to comply with the written description requirement, and infringement, but reversed the district court's summary judgment of no invalidity based on obviousness. In an unusual procedural move, the parties stipulated that for the issues on which both parties moved for summary judgment, the district court could make findings of fact based on the summary judgment record, making it similar to an inter partes proceeding at the TTAB for those issues. This stipulation included all issues except obviousness.

The Federal Circuit found no clear error in the district court's determination of the other issues, but held there was a genuine issue of fact that should have prevented summary judgment on obviousness. The court noted the Graham factual inquiries underlying the obviousness determination were legitimately in dispute, thus rendering summary judgment inappropriate on that issue.

More detail of Commonwealth Sci. & Indus. Research Org. v. Buffalo Tech., Inc. after the jump.

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Two district courts, one correct claim construction; $103 million damage award vacated

Fri, 25 Apr 2008 10:40:00-0500

In a recent decision, the Federal Circuit reversed a jury verdict of willful infringement and a total award of over $100 million based on a modified claim construction. The court also reversed the finding that one asserted claim was not anticipated, and remanded the case for a redetermination of infringement and whether the remaining claims were valid.

The court considered two competing constructions of the same claim terms, one by the district court in this case, and another by a second district court in an unrelated case involving the same patent. The Federal Circuit found the second district court's construction to be the proper one, and therefore reversed the construction on appeal (and the related finding of infringement).

More detail of Finistar Corp. v. DirecTV Group, Inc. after the jump.

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Computer-implemented means-plus-function claim invalid when no algorithm disclosed in specification

Mon, 31 Mar 2008 16:23:00-0500

In a decision Friday, the Federal Circuit affirmed a final judgment of invalidity of all claims of a patent indefinite. The claims had several means-plus-function clauses that were computer-implemented, however no algorithms for implementing the claimed functions were disclosed in the specification. The district court held the claims invalid because there was no "structure" (i.e., algorithm) disclosed in the specification corresponding to the means-plus-function clauses.

The Federal Circuit affirmed, noting that when a means-plus-function clause is computer-implemented, there must be at least one example in the specification of an algorithm performing the function in order to meet the requirements of 35 U.S.C. § 112 ¶ 6 . Without such an example, what is left is purely functional claim language, which is impermissible under the statute.

Likewise, it is insufficient to argue that one of ordinary skill in the art would be able to implement the method. While that may solve any § 112 ¶ 1 enablement concerns, it does not meet the statutory requirement of a disclosure of "structure" in § 112 ¶ 6. As a result, the claims were held invalid as indefinite.

More detail of Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech. after the jump.

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Sufficient structure recited in claim limitation using "means" to prevent application of § 112 ¶ 6

Wed, 30 Jan 2008 10:35:00-0500

In a decision yesterday, the Federal Circuit reversed a district court's claim construction and the associated summary judgment of noninfringement. The district court held the relevant claim term was a means-plus-function limitation, as it used the word "means," as well as because in an interview summary in the prosecution history, it appeared the USPTO interpreted the term as a means-plus-function clause. Based on this interpretation, the court granted summary judgment of noninfringement, as the accused device did not have the required function.

The Federal Circuit reversed, holding the limitation in question was not a means plus function limitation as it recited the "exact structure that performs the function[] in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure." Further, the attorney's remarks when the amendment was made indicated that the structure set forth in the claim was intended to perform the function. As a result, the claim element was not properly considered a means-plus-function element. Under the revised claim construction, there were genuine issues of material fact regarding infringement, resulting in the reversal and remand.

More details of TriMed, Inc. v. Stryker Corp. after the jump.

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Statement during prosecution not a clear and unmistakable disavowal, no prosecution disclaimer

Thu, 29 Nov 2007 11:50:00-0500

In a decision yesterday, the Federal Circuit partially reversed a district court's summary judgment of noninfringement of a patent directed to closed circuit television systems. In granting summary judgment, the district court held that the doctrine of prosecution disclaimer limited the scope of the claims, finding the inventors characterized the invention narrowly in response to an office action.

The Federal Circuit disagreed, holding that there was not the necessary clear and unmistakable disavowal of claim scope necessary for prosecution disclaimer to apply. Specifically, the statement in question was contrary to the description of the invention in the specification, was inconsistent with other statements made in the same office action response, and one of ordinary skill in the art would not recognize the statement to be a clear and unmistakable surrender of claim scope, because it would result in an inoperable system. Because prosecution disclaimer did not apply "[o]n this unique amalgamation of facts," the court reversed the district court's claim construction. However, because only one of three accused products potentially infringed even under the revised, broader claim construction, the district court's summary judgment was only partially reversed.

More detail of Elbex Video, Ltd. v. Sensormatic Elecs. Corp. after the jump.

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Means-plus-function claim must recite some structure, "known equipment" not enough

Mon, 18 Jun 2007 16:13:00-0500

In a decision today, the Federal Circuit affirmed a district court's finding of invalidity of a several claims of a patent for indefiniteness under 35 U.S.C. § 112, ¶ 2. The patent specification did not describe a corresponding structure for the claim limitation "control means" as required by 35 U.S.C. § 112, ¶ 6, but instead stated that "known equipment" could be used. The court found that this was not sufficient to actually recite structure, and as a result claims incorporating this limitation were invalid for indefiniteness.

More details of Biomedino, L.L.C. v. Waters Techs. Corp. after the jump.

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