Filewrapper® | A patent, trademark, and copyright law blog - Claim construction

Dependent claim can't be obvious when indepdendent claim is not; verdict vacated as inconsistent

Mon, 19 Oct 2009 17:10:00-0500

In a recent decision, the Federal Circuit affirmed-in-part a district court's decision regarding obviousness, holding the defendant was not entitled to summary judgment that the asserted claims were invalid for obviousness. The court vacated the district court's entry of judgment of an inconsistent jury verdict of obviousness: the jury held a dependent claim obvious but the independent claim from which it depends not obvious. The court stated that such a result reflects an "irreconcilable inconsistency" and thus a new trial on obviousness must be granted.

The court also addressed the question of incorporation by reference. The defendant argued the claims were anticipated based on a prior art patent that made reference to another patent for one of the relevant limitations. The district court held the incorporation by reference was ineffective and excluded expert testimony regarding the "combined" prior art. The Federal Circuit reversed, holding the incorporation by reference was sufficiently specific to be successful, and remanded the issue of anticipation to the district court for redetermination.

More on Callaway Golf Co. v. Acushnet Co. after the jump.

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Three disputed claim terms, three revised constructions, one remand

Tue, 23 Jun 2009 16:19:00-0500

In a recent decision, the Federal Circuit vacated and remanded a district court's judgment of noninfringement based on the parties' stipulation after claim construction. The district court construed three claim terms in a way that the parties agreed rendered all accused products noninfringing, and the plaintiff appealed.

On appeal, the Federal Circuit reversed the district court's claim construction of each of the terms. The opinion followed a straightforward Phillips analysis for each term. Applying the revised construction, the court held remand was appropriate to determine the issue of infringement in the first instance, even though the defendant, for the first time at oral argument, claimed its devices did not infringe even under the revised constructions.

More detail of Paragon Solutions, LLC v. Timex Corp. after the jump.

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When analyzing written description in interference, claims construed according to patent copied from

Tue, 16 Jun 2009 11:23:00-0500

In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment in a § 146 action brought after an interference proceeding at the USPTO. The district court agreed with the Board's decision to award priority to the senior party in the interference, granting the senior party's motion for summary judgment that its specification satisfied the written description requirement for the interference count. In coming to this conclusion, the district court construed the count by reference to the specification of the senior party's application, rather than by reference to the specification of the junior party's issued patent. The district court also determined the proper standard of review was for substantial evidence, holding the junior party did not advance any "meaningful evidence" apart from what was considered by the Board.

The Federal Circuit reversed. The court determined the district court erred both with regard to its determination that 1) the claims should be construed in light of the host application whose written description was being challenged and 2) that evidence proffered to the district court was insufficient to require de novo determination of the facts under § 146. The court reconciled two prior decisions, In re Spina and Rowe v. Dror, dealing with the proper source for claim construction in an interference. As described by the court:

[W]hen a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language. When a party challenges a claim's validity under § 102 or § 103, however, [the Federal Circuit] and the Board must interpret the claim in light of the specification in which it appears.

Applying this law, the court construed the count in light of the proper specification. In light of the revised construction, the Federal Circuit reversed the district court's grant of summary judgment that the senior party's disclosure met the written description requirement and remanded with instructions to enter summary judgment for the junior party.

More detail of Agilent Techs., Inc. v. Affymetrix, Inc. after the jump.

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Close but no cigar: ITC gets 4 of 5 claim constructions correct, but must reconsider 2 issues

Mon, 15 Jun 2009 21:03:00-0500

In a recent decision, the Federal Circuit addressed a variety of claim construction, infringement, and validity issues in an appeal from the International Trade Commission. After construing five disputed claim terms, the ITC held one of four representative products infringed, the remaining three did not infringe, and one claim invalid as anticipated. Both parties appealed.

The Federal Circuit affirmed in part, reversed in part, and remanded. The court affirmed the ITC's construction of 4 of the 5 disputed terms. However, the modification of one term resulted in the court vacating the ITC's determination of invalidity of one claim, as well as infringement of two of the four devices. The Federal Circuit affirmed the finding of noninfringement of the other two devices, and remanded for reconsideration of the various issues in light of the revised construction.

More detail of Linear Tech. Corp. v. Int'l Trade Comm'n after the jump.

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Estoppel applies to all added limitations in claims, including when present in unamended claims

Wed, 15 Apr 2009 16:11:00-0500

In a decision Friday, the Federal Circuit affirmed a district court's grant of summary of no literal infringement and that prosecution history estoppel barred application of the doctrine of equivalents. During prosecution of the patent, a total of three limitations from two different dependent claims were added to the asserted claim in separate amendments, although only two of the limitations were addressed by the applicant and examiner. The district court held the third element was not literally present in the accused product, and, based on the amendment, could not be present under the doctrine of equivalents.

The Federal Circuit agreed. The court held it was immaterial that the first amendment (with the "extra" limitation at issue) did not result in allowance; the estoppel applied to each of the added limitations. Importantly, the court also observed that this presumption of estoppel applied to all claims of the patent containing the limitation, whether or not they were amended:

Thus, in this case, the cancellation of original independent claim 1 coupled with the rewriting of original dependent claim 7 as independent claim 14 gave rise to a presumption of surrender applicable to all limitations, found in any of the claims of the '625 patent, that correspond to the limitations of claim 7.

The court also held that even though the third limitation was not specifically argued, its addition was not tangential to the rationale underlying the amendment, thereby preventing application of prosecution history estoppel. Specifically, the amendment stated one of the two limitations was not present in the prior art, but added the limitation was not present "in combination with the other structure" of the claims. This additional language brought the additional limitation into the argument, making it not tangential. Further, the court held the absence of explanation why the additional limitation was added meant it could not be tangential, because whether an amendment is tangential must be determined from the prosecution record. Accordingly, the court affirmed the district court's grant of summary judgment of noninfringement.

More detail of Felix v. Am. Honda Motor Co. after the jump.

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Combining two embodiments in same prior art patent "does not require a leap of inventiveness"

Mon, 30 Mar 2009 10:12:00-0500

In a recent decision, the Federal Circuit reversed a district court's denial of judgment as a matter of law of obviousness. A jury held the claim at issue was not obvious, and the district court denied the defendant's post-verdict motion for judgment as a matter of law on the issue.

While the Federal Circuit affirmed the district court's construction of two disputed claim terms, according to the Federal Circuit, a single reference disclosing multiple embodiments in sequential drawings that disclosed all the claim limitations rendered the claim in question obvious.

More details of Boston Scientific Scimed, Inc. v. Cordis Corp. after the jump.

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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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Today's prosecution practice tip: don't use the phrase "the present invention" in the specification

Thu, 18 Dec 2008 15:01:00-0500

In a decision last week, the Federal Circuit affirmed a district court's claim construction and its related summary judgment of noninfringement. The district court held the applicable claim term was narrower than the "lay understanding" of the term, based on the specification. Because the specification was clear, the district court refused to consider the prosecution history in the claim construction analysis.

The Federal Circuit agreed that the specification supported the district court's narrower reading of the term, noting the specification repeatedly characterized as "the present invention" the narrower understanding of the term. The court also noted that while it must consider the prosecution history, the prosecution history was "not particularly helpful to either party's claim construction position." As a result, the Federal Circuit affirmed the district court's claim construction. Because it was undisputed there was no infringement under this construction, the court also affirmed the summary judgment of noninfringement.

More detail of Netcraft Corp. v. eBay, Inc. after the jump.

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District court's order dismissing the action with prejudice held to be nonfinal due to counterclaims

Wed, 17 Dec 2008 09:22:00-0500

In a decision Thursday, the Federal Circuit affirmed a district court's denial of a preliminary injunction, and held it did not have jurisdiction over the remainder of the appeal because there was no final judgment. It was undisputed there was no infringement under the district court's claim construction of the single element at issue. After denying the requested preliminary injunction and granting the defendant's motion for summary judgment of noninfringement, the district court entered an order that stated, among other things, that the "action" was "dismissed with prejudice," and that it was "final and appealable." However, the defendant had asserted counterclaims that were not mentioned in any of the briefing.

The Federal Circuit agreed with the district court's claim construction, and affirmed the denial of the preliminary injunction. However, the court held it did not have jurisdiction over the remainder of the appeal, because the defendant's counterclaims were still pending, making the judgment nonfinal. The court did have some advice for the plaintiff and the district court on remand in two footnotes, stating:

While we do not address the district court's grant of summary judgment of noninfringement, we note that the claim construction we affirm herein was the basis for that decision, there being no dispute over infringement of claim 26 under that claim construction.

Because we exercise jurisdiction only over the matters discussed above, we do not address the district court's sua sponte dismissal of [the plaintiff's] remaining claims in this appeal. Nevertheless, we suggest that the district court may wish to reconsider that determination in light of the Sixth Circuit's prohibition against sua sponte dismissals except in limited circumstances.

More detail of iLOR, LLC v. Google, Inc. after the jump.

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Substantial question regarding validity insufficient to defeat likelihood of success?

Tue, 09 Dec 2008 09:24:00-0500

In a recent decision, the Federal Circuit affirmed a district court's grant of a preliminary injunction concerning the manufacture of an extended release formulation of an antibiotic. In a lengthy opinion, the Federal Circuit applied the Supreme Court's obvious-to-try logic from KSR to pharmaceutical patents. Notably, the court used the unpredictability of the pharmaceutical arts to find that, despite a prior art reference listing twelve different approaches in creating an extended release formula, the claimed formulation was (at least at the preliminary injunction stage) more than the predictable use of prior art elements according to their established functions.

The Federal Circuit also addressed the issue of inequitable conduct, reinforcing its holding in Kingsdown Medical that materiality alone does not automatically establish the bad faith necessary for a finding of inequitable conduct.

The panel majority, after an extensive review of case law regarding injunctive relief, held when determining likelihood of success, the court must examine the question with the ultimate issue in mind, namely whether the party will likely prevail on the issue. Judge Gajarsa's dissent, on the other hand, took the panel majority to task for diverging from the Federal Circuit's precedent on the issue, and would have held a substantial question of validity and enforceability was raised, making the preliminary injunction improper.

More on Abbot Labs. v. Sandoz, Inc. after the jump.

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High materiality without explanation for nondisclosure leads to inference of intent to deceive

Fri, 17 Oct 2008 10:59:00-0500

In a recent decision, the Federal Circuit affirmed a district court's finding of inequitable conduct for one patent but reversed on a second, affirmed a finding of no invalidity of the second patent, but vacated the finding of infringement after modifying the district court's claim construction of a claim term. The court also reversed the finding of indefiniteness of a third patent.

The court continued its recent discussions of when (if ever) an inference of intent to deceive is permissible to support an inequitable conduct finding where there is no independent evidence of such intent. Here, the majority affirmed the district court's inference of intent based on high materiality, proof of knowledge of the withheld art, and a lack of credible explanation for the nondisclosure. Judge Lourie dissented, arguing the majority conflated intent with materiality. Given the apparent disagreement on this issue, a case presenting the issue of when (or whether) such an inference is permissible seems to be a candidate for en banc review.

More detail of Praxair, Inc. v. ATMI, Inc. after the jump.

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Anticipation no longer the epitome of obviousness? Claims can be anticipated but nonobvious

Thu, 16 Oct 2008 16:37:00-0500

The Federal Circuit recently affirmed a district court's finding of non-willful infringement for one product, reversed its claim construction and related finding of noninfringement of a second product, and vacated its judgment as a matter of law on the issue of anticipation. The district court, at the charge conference near the end of the jury trial in this case, decided not to instruct the jury on anticipation, holding the defendant's anticipation argument was "iffy," and that the arguments were "best captured by obviousness."

The Federal Circuit held this determination was in error. As stated by the court, "[a]n 'iffy' anticipation case, however, does not foreclose a favorable verdict." Further, the court noted it is the party's right to make the strategic decision about which defenses to present to the jury, so long as there is sufficient evidence to generate a verdict in the party's favor. The court rejected the contention that every anticipated claim is also obvious, and as a result of the lack of complete overlap between the defenses, remanded the case for a determination of whether the claims were anticipated.

Judge Mayer dissented on this issue. In his opinion, the majority's conclusion regarding the overlap of anticipation and obviousness is incorrect. He attacked the majority's citations as "unsupportable," observing the majority was "unable to cite a case remanding to the district court for consideration of anticipation, while at the same time sustaining a determination that the claims at issue are not obvious."

More detail of Cohesive Techs., Inc. v. Waters Corp. after the jump.

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Inducement not shown when accused product can work in an infringing way but doesn't have to

Tue, 07 Oct 2008 07:40:00-0500

In a recent decision, the Federal Circuit affirmed the International Trade Commission's finding of noninfringement with respect to one patent but reversed and remanded on another. At issue was whether the defendant had imported chipsets that infringed five of the plaintiff's patents in violation of 19 U.S.C. § 1337. The action was dismissed with regard to two of the patents, as any action related to those two patents must occur in Federal Court in California due to a forum selection clause. Another patent is the subject of a separate appeal after an exclusion order was entered. The Commission adopted an administrative law judge's determination of noninfringement with respect to the remaining two asserted patents.

The Federal Circuit affirmed the determination of noninfringement for one patent, holding the patentee had presented insufficient evidence to show the accused devices necessarily infringed, and the patentee did not provide evidence of specific instances of direct infringement. The court disagreed with the ALJ's claim construction with respect to the second patent. The administrative law judge misinterpreted expert testimony on whether a control signal was required to be changeable and accordingly the court vacated the noninfringement finding with regard to one of the eight accused chips, but affirmed the finding of noninfringement with regard to the other seven even under the revised construction.

More on Broadcom Corp. v. Int'l Trade Comm'n after the jump.

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Advice of counsel evidence still relevant to intent to induce infringement

Mon, 06 Oct 2008 16:55:00-0500

In a recent decision, the Federal Circuit affirmed a jury's finding of infringement of two patents and the related injunction, but reversed the district court's claim construction and the concomitant finding of infringement regarding a third patent. The court affirmed the district court's injunction despite the fact that the patentee licensed, rather than manufactured, the claimed inventions. The injunction was affirmed largely due to the "structural nature of a design win market" typified in nascent technology designs where there are multiple standards competing for market domination, and the fact that the injunction did not take effect for 20 months after the jury verdict to permit time to develop and implement a design-around.

In addition, the Federal Circuit rejected the defendant's contention that In re Seagate changed the evidentiary burden for proving intent in the context of inducing infringement. The defendant argued that after Seagate, opinion of counsel evidence was no longer relevant to the question of intent for inducing or contributory infringement. The court held the intent necessary for an inducement finding may still be inferred from "all the circumstances." This has two requirements, as described in DSU Medical: (1) the defendant intended to cause the acts that constitute direct infringement, and (2) the defendant knew or should have known its action would cause the direct infringement. The court observed opinion of counsel evidence may reflect what the accused infringer knew or should have known, it remains relevant to the second prong of this analysis. Further, the court stated it would be "unfair to allow opinion-of-counsel evidence to serve an exculpatory function . . . and not yet permit patentees to indentify failures to procure such advice as circumstantial evidence of intent to infringe."

Here, the accused infringer obtained an invalidity opinion, but declined to waive privilege. The Federal Circuit held it was not error for the district court to instruct the jury that the lack of an opinion could be relevant to the issue of intent. The court also instructed the jury, consistent with Knorr-Bremse, that the lack of opinion was not grounds to assume the opinion would be unfavorable. As such, the instructions as a whole comported with Federal Circuit precedent, and the instructions were proper.

More detail of Broadcom Corp. v. Qualcomm Inc. after the jump.

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Inventor testimony regarding intent during patent prosecution irrelevant to claim construction

Mon, 29 Sep 2008 16:22:00-0500

In a recent decision, the Federal Circuit vacated a stipulated judgment of noninfringement on claim construction grounds. The construction issue dealt with the significance of a limitation that applied to an "at least one" element. Specifically, the relevant claim required "at least one condylar element," where "the condylar element" had certain features. The district court held the requirement applied to all condylar elements present in an apparatus, as it was undisputed that either one or two could be used. Under this construction, it was undisputed there could be no infringement.

The Federal Circuit reversed. The court held the features described for "the condylar element" could be infringed even if only one of two condylar elements had the claimed features. The court noted that at least some of the objectives of the invention would still be met if one one of two elements had the claimed features. The court also rejected an inventor's testimony to the contrary, noting such testimony "is still limited by the fact that an inventor understands the invention but may not understand the claims, which are typically drafted by the attorney prosecuting the patent application." The court held such testimony as to the subjective intent of the inventor "is irrelevant to the issue of claim construction."

More detail of Howmedica Osteonics Corp. v. Wright Med. Tech., Inc. after the jump.

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