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

MVS Filewrapper® Blog: Intrinsic Evidence Can Provide Adequate Support to Overcome Indefiniteness

Wed, 01 May 2013 12:54:00-0500

In Biosig Instruments, Inc. v. Nautilus, Inc., the Federal Circuit reversed a decision by the U.S. District Court for the Southern District of New York finding a patent invalid for indefiniteness, relying on intrinsic evidence. Biosig Instruments, Inc. (“Biosig”) is the assignee of U.S. Patent No. 5,337,753 (“the ’753 patent”). The ’753 patent is directed to a heart rate monitor for use with exercise equipment and exercise procedures. Biosig sued Nautilus, Inc. (“Nautilus”) for patent infringement alleging that claims 1 and 11 of the ’753 patent were infringed by Nautilus’s exercise equipment that has a mounted heart rate monitor.

In the late 1990s, Biosig was in negotiations with Stairmaster Company—Nautilus’s predecessor—regarding Biosig’s patented technology, but the companies failed to reach an agreement. Stairmaster, and eventually Nautilus, started to sell exercise equipment with mounted heart rate monitors. Biosig sued Nautilus in August 2004, alleging that the equipment infringed its patent. Following reexaminations and re-filed patent infringement suits, the District Court for the Southern District of New York eventually conducted a Markman hearing on the asserted claims of the ’753 patent in September 2011. Among the terms the court construed was the term “spaced relationship.” The district court construed the term to mean that “there is a defined relationship between the live electrode and the common electrode on one side of the cylindrical bar and the same or a different defined relationship between the live electrode and the common electrode on the other side of the cylindrical bar.” Following the district court’s claim construction, Nautilus moved for summary judgment of non-infringement and invalidity for indefiniteness.

In February 2012, the district court ruled on the summary judgment motions, denying the motion for summary judgment of non-infringement and granting the motion for invalidity based on indefiniteness. The district court’s holding of invalidity for indefiniteness was founded on the conclusion that the term “spaced relationship” was ambiguous, despite the fact that the court had construed the term in its Markman order. Biosig appealed the district court’s grant of summary judgment, with the sole issue on appeal being the indefiniteness of “spaced relationship.”

On appeal, the Federal Circuit’s analysis began with a summary of the standards of indefiniteness, stating “[a] claim is indefinite only when it is ‘not amenable to construction’ or ‘insolubly ambiguous.’” The Court went on to discuss words of degree, for which “the court must determine whether the patent provides ‘some standard for measuring that degree.’” In this instance, the Court concluded that the term was not indefinite, as it “was amenable to construction,” whereas “indefiniteness . . . would require a showing that a person of ordinary skill would find ‘spaced relationship’ to be insolubly ambiguous—that it fails to provide sufficient clarity delineating the bounds of the claim to one skilled in the art.” The Federal Circuit specifically relied on the intrinsic evidence that the district court used in construing the term in its Markman order. In doing so, the Federal Circuit noted that the specification described the “spaced relationship” of the electrodes in terms of their function, and cited the evidence submitted during the reexamination, including a declaration by the inventor, used to traverse a rejection by the USPTO. In light of the specification and intrinsic evidence, the Federal Circuit held that the term “spaced relationship” was not indefinite; and therefore, that the grant of summary judgment was in error. Accordingly, the Federal Circuit reversed the district court’s invalidity determination and remanded the case for further proceedings.

MVS Filewrapper® Blog: New and Useful - April 23, 2013

Tue, 23 Apr 2013 11:45:00-0500

· In K-Tech Telecoms v. Time Warner Cable, the Federal Circuit confirmed that the standard for evaluating the adequacy of complaints alleging direct patent infringement remains Form 18 of the Appendix of Forms to the Federal Rules of Civil Procedure ("Form 18"). K-Tech filed separate complaints against Direct TV and Time Warner Cable (“TWC”) on the same day, alleging infringement of four patents. Direct TV and TWC each moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), asserting the complaint, as filed, lacked sufficient factual specificity to state a cause of action for direct patent infringement. K-Tech sought, and was grated, leave to amend the complaints. After K-Tech filed its amended complaints, TWC and Direct TV again moved to dismiss under 12(b)(6). The district court granted the motions to dismiss, stating that the amended complaints failed to cure the defects with the original complaint, namely that the complaints did not explain why K-Tech believed the defendants were utilizing the methods and products protected by the asserted patents, rather than using other noninfringing methods and products, and therefore failed to meet the standards articulated in Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 129 S. Ct. 1937 (2009). K-Tech appealed the dismissal two weeks before the Federal Circuit issued its decision in R+L Carriers, Inc. v. DriverTech LLC (In re Bill of Lading Transmission & Processing System Patent Litigation), 681 F.3d 1323 (Fed. Cir. 2012). The Federal Circuit consolidated the appeals.

On appeal, K-Tech argued that the amended complaints complied with Form 18 and that the district court applied the incorrect standard. The defendants argued that sufficiency with respect to Form 18 must be interpreted in light of Twombly and Iqbal, and Ninth Circuit law, and that the amended complaints failed to meet either the plain language of Form 18 or the requirements of Twombly and Iqbal. The court relied on its recent decision in R+L Carriers in reasserting the sufficiency of Form 18 for pleading patent infringement, and that to the extent any conflict exists between Form 18 and Twombly/Iqbal, the form controls. Because Form 18 does not include any indication that a patent holder must explain why it believes that a defendant is utilizing the methods and products protected by the asserted patents, rather than using other noninfringing methods and products, such assertions are not required to survive a motion to dismiss. Further, the court held that the failure of K-Tech to identify a particular allegedly infringing device or devices—by name, model number, or otherwise—did not bar K-Tech from filing a complaint in accordance with Form 18, stating, “A defendant cannot shield itself from a complaint for direct infringement by operating in such secrecy that the filing of a complaint itself is impossible. Nor is a defendant immune from a direct infringement claim because he does not make a ‘device’ but, rather, infringes through a system or method.”

· In Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., the Federal Circuit reversed a decision by the U.S. District Court for the Southern District of New York granting summary judgment of invalidity of two claims of a patent owned by Lazare Kaplan (“LK”), and asserted against Photoscribe Technologies, Inc. and the Gemological Institute of America (collectively “Photoscribe”). The Federal Circuit also reversed the district court’s granting of a motion under Federal Rule of Civil Procedure 60(b) filed by Photoscribe that vacated the district court’s prior judgment finding the same claims not invalid. LK sued Photoscribe alleging infringement of Lazare Kaplan’s patent covering systems and methods for microinscribing gemstones. In the ensuing trial, the asserted claims of the LK patent were adjudged not invalid and not infringed, either literally or under the doctrine of equivalents. LK appealed the judgment of noninfringement, but Photoscribe did not appeal the judgment that the asserted claims were not invalid. On appeal, the Federal Circuit vacated the judgment as based on erroneous claim construction and remanded the case. On remand, the district court retried both the invalidity and infringement issues, and granted Photoscribe’s motions for summary judgment of invalidity and for relief from the prior judgment under Rule 60(b) while denying LK’s motion for summary judgment of infringement. LK again appealed the district court’s ruling.

The Federal Circuit, in the second appeal, reversed the grant of relief under Rule 60(b) and vacated the finding of invalidity, with instructions to the district court to reinstate the original judgment of non-invalidity. The court concluded that the district court erred by allowing Photoscribe to address validity on remand despite its failure to file a cross-appeal from the adverse final judgment on validity in the original trial. The court also concluded that under Second Circuit precedent, Rule 60(b) could not provide the relief granted by the district court. The court then remanded the case again, with instructions for the district court to assess infringement under the construction the Federal Circuit had set forth in the prior appeal.

Judge Dyk dissented in the opinion, arguing that the inconsistency of allowing the patentee to assert infringement based on a broad claim construction while defending against invalidity based on a narrower claim construction should be alleviated by Rule 60(b), notwithstanding the fact that Photoscribe did not appeal the original judgment that the asserted claims were not invalid.

· In Aspex Eyewear, Inc. v. Zenni Optical LLC, the Federal Circuit affirmed a decision by the US District Court for the Southern District of Florida holding that Aspex was collaterally estopped from pursuing the suit against Zenni based on earlier litigation between Aspex and Altair Eyewear, Inc. for infringement of the same patents. The previous Altair litigation involved the same three patents, U.S. Patents No. 5,737,054 (the ’054 patent), No. 6,012,811 (the ’811 patent), and No. 6,092,896 (the ’896 patent), with many of the same claims asserted. The district court in the Altair litigation held that the ’811 and ’896 patents were not infringed, and the asserted claim of the ’054 patent was invalid for obviousness. The district court’s rulings were affirmed by the Federal Circuit.

The district court applied the Altair rulings to the issues in the suit against Zenni, holding that the accused products were materially indistinguishable and the previous decisions settled the question of whether the accused Zenni product could infringe the asserted patents, and Aspex was therefore collaterally estopped from bringing suit against Zenni. Aspex appealed the district court’s decision, arguing that the issues at stake were not identical because the claim terms that were construed and applied in the Altair litigation were not the same as the claim terms requiring construction in the Zenni suit. The Federal Circuit concluded that every claim asserted against Zenni contained the same limitation, in the same context, that was previously determined to be dispositive of non-infringement. As a result, even though some of the claims asserted against Zenni were not construed of applied, this did not create a new issue to defeat preclusion. The court further determined that Aspex had a full and fair opportunity to litigate the asserted patents, and the selection of additional claims for litigation and additional terms for construction could not override the holding of non-infringement.

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 - 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.

MVS Filewrapper® Blog: New and Useful - February 6, 2013

Wed, 06 Feb 2013 09:39:00-0500

· In Allergan, Inc. v. Barr Labs the Federal Circuit affirmed a decision by the District of Delaware finding that Barr Laboratories, Inc. and Sandoz Inc. had infringed a patent owned by Allergen, Inc., and finding the patent-in-suit valid. Barr and Sandoz each filed abbreviated new drug applications (ANDA) for a generic version of the drug covered by the Allergen patent, and both ANDAs asserted that the Allergen patent was invalid or would not be infringed by the manufacture, use, or sale of the new drugs for which the applications were submitted. Allergen sued Barr and Sandoz for infringement, and the suits were consolidated for a bench trial on invalidity and infringement. The district court construed a single disputed claim and determined Allergen had defined the disputed term in such a way in the specification as to cover the Barr and Sandoz products. The district court also declined to adopt the defendants’ arguments for invalidity based on obviousness. The defendants’ obviousness case at trial relied on the testimony of an expert. However, the district court determined that the expert’s testimony was undermined by his lack of credibility, as exposed on cross-examination. As a result, the district court declined to review the prior art references and weigh their import absent the guidance of an expert, and therefore concluded that Barr and Sandoz had failed to prove obviousness. The defendants appealed both the infringement and invalidity determinations, specifically asserting that the district court erred in not reviewing the prior art references and weighing their import notwithstanding the problems with the expert testimony.

On appeal, the Federal Circuit confirmed the district court’s claim construction and infringement determination. The Federal Circuit also confirmed the district court’s determination with respect to the expert witness and the resulting conclusions regarding invalidity and obviousness. Specifically, the court held that the district court did not err in its decision because the case was sufficiently complex to require expert testimony in making the determination of obviousness, and “common sense and logic were not sufficiently illuminating in this case to carry Barr and Sandoz's burden of proving obviousness.”

· In Arkema Inc. v. Honeywell International, Inc. the Federal Circuit reviewed a district court’s denial of declaratory judgment jurisdiction for a case involving two suppliers of an automotive coolant. Arkema Inc. brought a declaratory judgment action seeking judicial determination that its plans to supply automotive coolant to car manufacturers would not infringe Honeywell’s U.S. patents. This declaratory judgment action followed foreign litigation wherein Honeywell asserted European patents coving the same technology against Arkema. After the litigation commenced, Honeywell obtained two additional patents, and Arkema sought to amend its complaint to include declaratory judgment on these two additional patents. The district court denied Arkema’s motion, concluding that there was insufficient case or controversy for the court to exercise declaratory judgment jurisdiction. The district court then certified for appeal its order denying Arkema’s motion.

The Federal Circuit reversed the district court, addressing each of the district court’s rationales for declining jurisdiction in turn. In particular, the Federal Circuit held that the district court’s reliance on Arris Grp., Inc. v. British Telecommc’ns PLC was misplaced because while acts of direct infringement by a customer are sufficient to support DJ action by a supplier, they are not necessary. Further, the appellate court concluded that “[t]here is no requirement that Arkema identify the particular manufacturers that will purchase the [automotive coolant] or the particular automobile purchasers who will purchase the cars from the manufacturers, or the particular dates on which this will occur.” The Federal Circuit instead concluded that the basis for Arkema’s declaratory judgment jurisdiction was formed by the foreign litigation of the same technology along with contracts entered into by Arkema with customers for the supply of the automotive coolant. The case was remanded for reconsideration.

· In Accent Packaging, Inc. v. Leggett & Platt, Inc. the Federal Circuit reversed a grant of summary judgment by the United States District Court for the Southern District of Texas for the alleged infringer, Leggett & Platt. The district court granted summary judgment of non-infringement based on it construction of the terms “each” and “a respective one” within the phrase “with each of the operator bodies being operably coupled with a respective one of said gripper, knotter, cutting element and cover.” The district court construed the terms to mean that there could only be a single function for a single “operator body,” and as a result the accused device could not infringe the claims because it used operator bodies with multiple functions. Accent appealed the grant of summary judgment, challenging the district court’s claim construction.

The Federal Circuit reversed the grant of summary judgment, concluding that the district court improperly construed the terms at issue. The appellate court, conducting its own de novo claim construction, determined that the narrow construction asserted by Accent was improper because it excluded the preferred embodiment disclosed in the specification. The court held that the preferred embodiment featured an elongated operator body that is operably coupled to one or more operator elements, and because “a claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct” (On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004)), the district court’s claim construction doing just that was erroneous. Based on the Federal Circuit’s own claim construction, it remanded the case and ordered the district court to grant summary judgment of infringement to Accent. A more in depth analysis of this case will be posted shortly.

Inventor's prior art patents and prosecution history lead to reversal of claim construction

Tue, 26 Oct 2010 12:55:00-0500

In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment of noninfringement and invalidity based on inadequate written description. The issue of infringement was reversed based on the district court's incorrect construction of a critical claim limitation. While the court held it was a "close case," it held the patentee had not acted as his own lexicographer and the specification and file history showed a broader construction was appropriate. In addition, a broader construction was supported by usage of the term in prior art patents by the same inventor.

On the written description issue, the court held there was at least a factual issue as to whether limitation at issue, which permitted reinforcement of any portion of a portion of the claimed product, was inadequately described. The court observed that the allegedly limiting language was a "preferred aspect" of the invention, and thus the patentee's experts' testimony that one in the art would interpret the specification as more broadly disclosing the device was sufficient to generate a fact issue. The district court characterized this testimony as "not helpful" when granting summary judgment of invalidity.

More detail of Laryngeal Mask Co. v. Ambu A/S after the jump.

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Preamble held not limiting because body of claim sets forth complete invention

Mon, 20 Sep 2010 15:47:00-0500

In a recent decision, the Federal Circuit reversed a decision of the United States District Court for the District of Massachusetts. The district court had granted summary judgment of noninfringement to the defendant finding that the defendant's accused device did not perform a function found only in the preambles of the asserted claims.

The Federal Circuit held that the disputed preamble term did not limit the asserted claims, and therefore, reversed and remanded the case for further findings. Specifically, the court noted there was no suggestion in the prosecution history that the preamble was limiting, the preamble did not provide any antecedent basis for terms in the body of the claim (even though one element used "the" in the body of the claim), and the preamble did not define an essential component of the invention, such that the body of the claim defined the complete invention. Based on these factors, the preamble was not a limitation of the claim, and the summary judgment of noninfringement was reversed.

Judge Dyk dissented, and invited the court to take the issue of preambles en banc to create a bright-line rule that preambles are always limiting, rather than relying on the context of each patent.

More concerning Am. Med. Sys., Inc. v. Biolitec, Inc. after the jump.

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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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