Patent Case Summaries
Article Date: Thursday, November 04, 2010
Written By: Robin McGrath, Lance Lawson, Mike Connor, Ross Barron & Michele Glessner
The summaries below summarize patent-related opinions of interest issued by the Court of Appeals for the Federal Circuit from June 2010 through August 2010. These summaries were edited by Robin McGrath, a partner in Alston & Bird’s Atlanta office; and Lance Lawson and Mike Connor, partners, and Ross Barton and Michele Glessner, associates, in Alston & Bird’s Charlotte office.
Claim Interpretation: Generally
Claim Interpretation: Intrinsic Evidence: Specification
Haemonetics Corp. v. Baxter Healthcare Corp., et al., No. 09-1557 (Fed. Cir. (D. Mass.) June 2, 2010). Opinion by
Lourie, joined by Gajarsa and Moore.
In reversing in part and vacating in part, the Federal Circuit held that it is possible for claim terms to have different constructions in different claims as controlled by the claims and the specification.
Haemonetics Corp. (“Haemonetics”) sued Baxter Healthcare Corp. and Fenwal, Inc. (collectively “Fenwal”), alleging infringement of U.S. Patent 6,705,983 (“the ‘983 patent). The ‘983 patent is directed towards a centrifuge device designed to separate red blood cells from human blood in aphaeresis. After notices of claim construction and summary judgment, Haemonetics limited allegations of infringement to Claim 16. Fenwal counterclaimed that Claim 16 was invalid as indefinite, anticipated by prior invention, and as obvious. Claim 16 included three references to a “centrifugal unit”: the district court interpreted the term “centrifugal unit,” as it appeared in the preamble, to mean “the combination of both the vessel and the tubing,” but construed the other two references to a “centrifugal unit” to mean only the vessel. After the close of evidence, the district court granted Haemonetics’s motion for judgment as a matter of law (“JMOL”) that Claim 16 was not indefinite, and the jury subsequently found Claim 16 to be infringed and not invalid, and awarded lost profits and reasonable royalty damages. The district court denied Fenwal’s JMOL motions on anticipation and obviousness. Fenwal appealed the district court’s grant of JMOL that Claim 16 was not indefinite, and its denial of JMOL that Claim 16 was either anticipated or obvious. Fenwal also appealed the damages award.
On appeal, the Federal Circuit reversed in part the district court’s construction of the claim term “centrifugal unit.” The Federal Circuit determined that “centrifugal unit” is unambiguously defined in Claim 16 as “comprising” two structural components: a centrifugal component and a plurality of tubes. Claim 16 further recites “the” centrifugal unit as having certain dimensional characteristics. The Federal Circuit found that the district court, by reading “the centrifugal unit” in the context of dimensional limitations to refer exclusively to the vessel, ignored the antecedent basis for “centrifugal unit.” Further, the inconsistent use of identical dimensional limitations for different embodiments indicated to the Federal Circuit that “the centrifugal unit” must have different meanings in the context of different claims. The Federal Circuit ultimately reversed the district court’s construction of “centrifugal unit” and held that the claim term means “a vessel and a plurality of tubes,” irrespective of the claim term’s meaning in Claim 1.
After construing “centrifugal unit,” the Federal Circuit vacated the district court’s grant of JMOL that Claim 16 was not indefinite and vacated the jury’s verdict on invalidity, infringement, and award of prospective damages, as each relied on the district court’s incorrect claim construction. The case was remanded for proceedings consistent with the court’s opinion.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1557.pdf
Matt Ennis is an Associate in the IP Group of Alston & Bird’s Charlotte office.
Claim Interpretation: Generally
Claim Interpretation: Intrinsic Evidence: Specification
Infringement: Generally
Licenses, Patentable Invention: Generally
Litigation Practice and Procedure:
Procedure: Waiver
Remedies: Damages: Attorneys’ Fees
Silicon Graphics, Inc. v. ATI Technologies, Inc., et al., Nos. 08-1334, -1353 (Fed. Cir. (W.D. Wis.) June 4,
2010). Opinion by Rader, joined by Lourie and Prost.
In vacating the district court’s grant of summary judgment of noninfringement based on claim construction but upholding the district court’s other holdings, the Federal Circuit held that when interpreting patent claims in the context of the specification “a,” when used in combination with another claim term, means “one or more.” The Federal Circuit also held that when a product includes the structural means for performing a claimed function, it could still infringe from an operating system that is needed to use the product, even without activation.
Silicon Graphics, Inc. (“Silicon Graphics”) sued ATI Technologies, Inc., ATI Technologies ULC, and Advanced Micro Devices, Inc. (collectively “ATI”), alleging infringement of U.S. Patent Nos. 6,650,327 (“the ‘327 patent”). The ‘327 patent is directed to a graphics system. The district court granted summary judgment in favor of ATI on Claims 1-6, 9-12, and 15-16 of the ‘327 patent. After the summary judgment ruling, Silicon Graphics voluntarily dismissed the rest of its infringement case. At trial, ATI unsuccessfully challenged the validity of Claims 17-18 and 22-23 of the ‘327 patent. ATI moved for judgment as a matter of law (“JMOL”), for a new trial on validity of Claims 17-18 and 22-23, and for costs. The district court denied ATI’s post-trial motions. ATI appealed the denial of its post-trial motion, while Silicon Graphics cross-appealed aspects of the district court’s claim construction and conclusion that a license authorized the use of the invention claimed in the ‘327 patent.
On appeal, the Federal Circuit overturned the two of three claim constructions of terms appearing in the ‘327 patent. First, the Federal Circuit reversed the district court’s interpretation of “a rasterization process” as singular based on use of the article “a” and the specification’s failure to limit “a rasterization process” to a single process. Second, the Federal Circuit upheld the construction of the claim term “scan conversion,” noting that the specification specifically limited the claim term to the construction adopted by the district court. Third, the Federal Circuit reversed the district court’s construction of the term “s10e5” as “a 16 bit floating point format composed of one sign bit, ten mantissa bits, and five exponent bits, with an exponent bias of 16.” The Appeals Court noted that the district court improperly imported limitations found in one embodiment, despite more general statements in the specification that lacked the relevant limitations.
Next, the Federal Circuit vacated the district court’s grant of summary judgment of noninfringement based on a license, observing that the immunity provision of the license does not require end-user activation, and when a product includes structural means for performing a claimed function, it can still infringe. The Federal Circuit remanded for a determination as to whether any genuine issue of material fact exists that would allow ATI to continue to rely on the license.
The Federal Circuit affirmed the district court’s denial of ATI’s post-trial motions. The Appeals Court affirmed denial of JMOL, noting that sufficient evidence supported the jury’s conclusions. The district court’s denial of a motion for a new trial was also affirmed, as was the district court’s finding of waiver of the invalidity defense concerning other claims of the ‘327 patent. Finally, the Federal Circuit affirmed the denial of costs as ATI cannot allege it prevailed on summary judgment of noninfringement.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/08-1334.pdf
Matt Ennis is an Associate in the IP Group of Alston & Bird’s Charlotte office.
Defenses: Invalidity
Patentable Invention: Obviousness: Question of Law or Fact
Litigation Practice and Procedure: Procedure: Summary Judgment: Summary Judgment Procedure
TriMed, Inc. v. Stryker Corp., No. 09-1423 (Fed. Cir. (C.D. Cal.) June 9, 2010). Opinion by Linn, joined by Lourie and Moore.
In reversing the district court’s grant of summary judgment, the Federal Circuit held that the district court improperly granted summary judgment of invalidity when factual issues related to the teachings of prior art references remained. The Federal Circuit also held that the district court must articulate its basis for concluding that an invention was a common sense solution to a known problem.
TriMed, Inc. (“TriMed”) is the owner of U.S. Patent No. 5,931,839 (“the ‘839 patent”), which covers an implantable device used to set bone fractures. TriMed sued Stryker Corp. (“Stryker”) for patent infringement, alleging that Stryker’s wrist fixation device infringed Claims 1, 2, and 7-11 of the ‘839 patent. The district court first granted summary judgment of noninfringement, but the Federal Circuit reversed the ruling based on an erroneous claim construction and remanded the case for further proceedings. On remand, Stryker argued that the patent was invalid because it was anticipated by two references, referred to as the Leibovic article and the May application, and rendered obvious by a combination of either the Leibovic article or the May application and an article referred to as the Clancey article. The district court issued an order granting the motion that consisted of a signed copy of the Statement of Facts and Conclusions of Law submitted by Stryker with the anticipation section crossed out.
On appeal, TriMed argued that the following material factual disputes precluded a grant of summary judgment: (1) whether a wire disclosed in the May application is a fixation pin; (2) whether the holes disclosed in either the Leibovic article or the May application stabilize the pin against displacement and prevent compression; and (3) whether the Leibovic article shows a specific type of wire passing through a plate. TriMed also argued that the district court erred by failing to even consider evidence of secondary considerations of nonobviousness presented by TriMed.
The Federal Circuit explained that the determination of whether a claimed invention is obvious requires an inquiry into “whether the improvement is more than the predictable use of prior art elements according to their established functions,” which is “factual in nature.” Id. at 12. Therefore, “what a reference teaches, whether there is a trend or demand in the relevant marketplace or design community, the background knowledge of one of skill in the art” are questions reserved for the finder of fact. Id.
Stryker argued that TriMed’s disputed facts were immaterial because the district court found that the claimed invention was a solution to a known problem. The Federal Circuit ruled that a district court must articulate its basis for determining that an invention was a solution. Since the district court failed to do so, Stryker could not rely on that finding to support its argument that the facts were immaterial and thus summary judgment was appropriate. The Federal Circuit also admonished the district court for failing to consider TriMed’s evidence of secondary considerations of nonobviousness.
The Federal Circuit remanded the case for further proceedings and ordered that the case be reassigned in light of the fact that the current district court judge had failed to craft its own orders in granting summary judgment.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1423.pdf
David Frist is an Associate in the IP Group of Alston & Bird’s Atlanta office.
Remedies: Damages: Patent Marking/Notice of Infringement
Pequignot v. Solo Cup Co., No. 09-1547 (Fed. Cir. (E.D. Va.) June 10, 2010).
Opinion by Lourie, joined by Rader and Gajarsa.
In affirming the district court’s grant of summary judgment, the Federal Circuit held that false marking and a party’s knowledge of the false mark creates a rebuttable presumption that a party had the requisite deceptive intent under the false marking statute.
Solo Cup Co. (“Solo”) owns two patents, U.S. Patent Re. 28,797 (“the ‘797 patent”) and U.S. Patent 4,589,569 (“the ‘569 patent”). The ‘797 patent expired in 1988, and the ‘569 patent expired in 2003. The patents generally cover types of plastic cup lids. In order to mark its plastic lids, Solo created mold cavities that would stamp the appropriate patent number on the plastic lid when the lid was created.
In 2000, Solo realized that it was still marking lids with the expired ‘797 number. After seeking advice from outside counsel, Solo was advised that it should avoid furthering any unintentional false marking and, if possible, should change the mold cavities. Solo determined that changing the mold cavities would be costly and burdensome and thus did not remove the ‘797 patent number from the mold until the mold was ready for replacement due to normal wear and tear. In 2003, Solo adopted the same policy for lids marked with the ‘569 patent number.
In 2004, Solo was advised by outside counsel to place the following language on its packaging: “This product may be covered by one or more U.S. or foreign pending or issued patents. For details, contact www.solocup.com.” Id. at 5. Solo placed this language on all packaging regardless of whether the product was covered by a patent.
Pequignot, a patent attorney, filed a qui tam action under 35 U.S.C. § 292, alleging that Solo had falsely marked its products by failing to remove the ‘797 and ‘569 patent numbers from its products and placing the “may be covered” language on all packaging. The district court granted summary judgment in favor of Solo because Solo lacked the requisite intent to deceive. Specifically, the district court found that, while false marking combined with Solo’s knowledge of the false marking created a rebuttable presumption that Solo had the requisite intent, Solo had rebutted the presumption with evidence that it had relied in good faith on the advice of counsel.
Before addressing the intent issue, the Federal Circuit first held that marking a product with an expired patent number is a false marking within the meaning of § 292. The Federal Circuit then analyzed whether Solo marked its lids “for the purpose of deceiving the public.” While Pequignot argued that evidence of false marking and a party’s knowledge of the false marking is sufficient to show the requisite intent, the Federal Circuit agreed with the district court and held that the evidence only created a rebuttable presumption.
The Federal Circuit held that the burden of proof for rebutting the presumption is by a preponderance of the evidence. Thus, a mere statement that a party did not intend to deceive is insufficient to rebut the presumption. The Federal Circuit held that Solo had met its burden with regard to the mold cavities because it established that it acted in good faith based on the advice of counsel and sought only to minimize business disruption, not deceive the public. Similarly, the Federal Circuit held that Solo’s actions with respect to the “may be covered” language were not intended to deceive the public and were based on the advice of counsel.
The Federal Circuit thus affirmed the grant of summary judgment based on a lack of intent to deceive.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1547.pdf
David Frist is an Associate in the IP Group of Alston & Bird’s Atlanta office.
Defenses: Fraud and Inequitable Conduct: Intent to Deceive
Defenses: Fraud and Inequitable Conduct: Effect of Inequitable Conduct
Remedies: Damages: Attorneys’ Fees
Advanced Magnetic Closures, Inc. v. Rome Fastener Corp., et al., Nos. 09-1102, -1118 (Fed. Cir. (S.D.N.Y.) June 11, 2010). Opinion by Gajarsa, joined by Archer. Concurring opinion by Rader.
In affirming the district court’s award of attorneys’ fees and finding of inequitable conduct, the Federal Circuit held that issues of inventorship are material to patentability.
Advanced Magnetic Closures, Inc. (“AMC”) filed a patent infringement action against Rome Fasteners Inc. and several other defendants (collectively “Romag”), alleging infringement of U.S. Patent No. 5,572,773 (“the ‘773 patent”). The ‘773 patent covers magnetic snap fasteners. The sole-named inventor, Mr. Bauer, and his former employee, Mr. Riceman, both claimed to have invented the claimed magnetic snap fasteners. Conflicting testimony was introduced regarding whether Mr. Riceman provided the design for the magnetic snap fastener to Mr. Bauer or whether Mr. Bauer independently conceived of the invention.
After AMC presented its case in chief, Romag filed a Rule 50(a) motion for judgment as a matter of law (“JMOL”), which was granted by the district court. The district court also awarded fees under 35 U.S.C. § 285 based on the applicant’s inequitable conduct before the U.S. Patent and Trademark Office (“PTO”) and AMC’s litigation misconduct. The district court held AMC’s attorneys, including Mr. Jaroslawicz, jointly and severally liable under 28 U.S.C. § 1927.
The Federal Circuit first ruled that a district court has jurisdiction to make findings concerning inequitable conduct in the context of considering a motion for attorneys’ fees under § 285. The Federal Circuit then ruled that concealment of a true inventor’s involvement with a patent is an act of inequitable conduct that renders the patent unenforceable even as to co-inventors who were unaware of the bad conduct. Since any named inventor can cause the patent to be unenforceable, a court need not address inventorship issues under 35 U.S.C. § 102(f) prior to ruling on inequitable conduct.
In analyzing the district court’s ruling on inequitable conduct, the Federal Circuit held that the district court did not clearly err in finding that Mr. Bauer repeatedly and intentionally concealed the true inventor’s (Mr. Riceman’s) involvement. The Federal Circuit then held that the district court did not abuse its discretion in holding that the intentional concealment satisfied the materiality and intent elements of inequitable conduct. First, the Federal Circuit ruled that issues of inventorship are material to patentability. Second, the Federal Circuit held that the district court properly weighed the conflicting evidence from Mr. Bauer and Mr. Riceman. The Federal Circuit then upheld the district court’s finding that the ‘773 patent was unenforceable based on Mr. Bauer’s deceit. The Federal Circuit did not address the district court’s grant of JMOL because the ‘773 patent was unenforceable based on inequitable conduct.
The Federal Circuit also affirmed the award of attorneys’ fees under 35 U.S.C. § 285 because AMC never argued that the district court improperly awarded fees based on litigation misconduct and thus waived that argument. The Federal Circuit, however, reversed the district court’s award of attorneys’ fees under 28 U.S.C. § 1927 because the district court failed to find that Mr. Jaroslawicz acted in bad faith, which is required under Second Circuit law.
In Chief Judge Rader’s concurring opinion, the Chief Judge stated that the district court’s failure to explicitly consider a letter by Mr. Bauer and Mr. Riceman to the PTO was in error, but considered the error to be harmless. Chief Judge Rader also requested that, absent extreme facts such as those in this case, the Federal Circuit should avoid ruling on inequitable conduct cases until it resolves a pending en banc appeal in TheraSense, Inc. v. Becton, Dickinson & Co., Nos. 08-1511. -1512, -1513, -1514, -1595, 2010 WQL 1655391 (Fed. Cir. April 26, 2010) (granting rehearing en banc).
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1102.pdf
David Frist is an Associate in the IP Group of Alston & Bird’s Atlanta office.
Infringement: Contributory and Induced Infringement: Generally
Litigation Practice and Procedure: Procedure: Jury Instructions
Litigation Practice and Procedure: Procedure: Appellate Jurisdiction and Procedure
Remedies: Damages: Reasonable Royalty
Wordtech Systems, Inc. v. Integrated Networks Solutions, Inc., et al., No. 09-1454 (Fed. Cir. (E.D. Cal.) June 16, 2010). Opinion by Linn, joined by Mayer and Gajarsa.
The Federal Circuit reversed the district court’s denial of a new trial on the issues of personal liability of two corporate employees based on improper jury instructions. The Federal Circuit also reversed the denial of a new trial on the issue of damages because the jury verdict conflicted with the clear weight of the evidence.
Wordtech Systems, Inc. (“Wordtech”) sued Integrated Network Solutions, Inc. (“INS”) and two INS employees, Nasser Khatemi and Hamid Assadian (collectively “personal defendants”), in the U.S. District Court for the Eastern District of California, alleging infringement of U.S. Patent Nos. 6,141,298; 6,532,198; and 6,822,932 (collectively “patents-in-suit”). The patents-in-suit are directed to technology used for automated duplication of compact discs. After a trial, a jury found INS and the personal defendants each liable for direct infringement, contributory infringement, and inducement of infringement and awarded a reasonable royalty of $250,000, which was later trebled for willful infringement. The personal defendants filed a motion for judgment as a matter of law (“JMOL”) or a new trial on the liability issues and reasonable royalty, which the district court denied. The personal defendants then appealed the liability findings, reasonable royalty amount, and the denial of an earlier motion to amend their complaint to add invalidity defenses after the close of discovery.
On appeal, the Federal Circuit reversed the denial of the motion for a new trial on the liability issues, while affirming the JMOL ruling. Regarding the motion for JMOL, the Federal Circuit held that the personal defendants waived most of their arguments regarding the sufficiency of the evidence supporting the verdict because such arguments were not made in a proper Rule 50 motion. However, the Federal Circuit held that the jury instructions regarding piercing the corporate veil, inducement, and contributory infringement were so deficient that a new trial was necessary.
Similarly, the Federal Circuit also held that the jury’s royalty award conflicted with the great weight of the evidence and, accordingly, reversed the denial of a motion for a new trial on damages. Specifically, the Federal Circuit held that the jury’s award of over twice what Wordtech requested was not supported by the evidence, including Wordtech’s prior license agreements. The Federal Circuit held that there was insufficient evidence to correlate two prior lump-sum license agreements, which approximately averaged the jury’s award, because there was no testimony regarding the respective parties’ reasonable expectations when they entered into the respective agreements. Similarly, the Federal Circuit also held that the prior licenses that had a running royalty of between 3-12% did not justify the jury’s award that was equivalent to a 26.3% running royalty.
Lastly, the Federal Circuit affirmed the district court’s denial of a motion to amend the defendants’ answer and allege an invalidity defense for the first time because the motion was filed three months after the close of discovery and after the deadline to amend the pleadings.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1454.pdf
Matt Urbanawiz is an Associate in the IP Group of Alston & Bird’s Atlanta office.
Patent Office Procedures: Prosecution Before the Office: Prosecution of Applications: Priority Claims Encyclopaedia Britannica, Inc. v. Alpine Electronics of America, Inc., et al., Nos. 09-1544, -1545 (Fed. Cir. (W.D. Tex.) June 18, 2010). Opinion by Moore, joined by Bryson and Gajarsa.
The Federal Circuit affirmed a summary judgment declaring two patents invalid because an intermediate priority application was not entitled to an earlier filing date due to the fact that the intermediate application did not make a specific priority reference to a prior application.
Encyclopaedia Britannica, Inc. (“Britannica”) asserted U.S. Patent Nos. 7,051,018 and 7,082,437 (collectively “the patents-in-suit”) in the U.S. District Court for the Western District of Texas against a number of defendants. The patents-in-suit are directed to multimedia database search systems for retrieving textual and graphical information. The district court granted summary judgment that the patents-in-suit were invalid as anticipated because of an intervening foreign patent application published in 1991. The patents-in-suit purportedly claim priority to an original application filed in 1989, but an intermediate patent application in the chain of priority did not make a specific priority claim to the prior applications in the chain and was improperly filed such that it never received a filing date.
On appeal, Britannica argued that pursuant to the relevant statute, 35 U.S.C. § 120 (1988), intermediate priority applications did not require an express claim for priority while the final application in the chain did. Britannica further argued that a subsequent amendment to the statute that clearly required an express claim for priority for all applications confirmed its position that the unamended statute did not require express claims for intermediate priority applications. The Federal Circuit rejected these arguments based on the language of the statute and affirmed the district court’s grant of summary judgment of invalidity.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1544.pdf
Matt Urbanawiz is an Associate in the IP Group of Alston & Bird’s Atlanta office.
Infringement: Literal Infringement
Litigation Practice and Procedure: Generally
Lincoln Nat’l Life Ins. Co. v. Transamerica Life Ins. Co., et al., Nos. 09-1403, -1491 (Fed. Cir. (N.D. Iowa) June 23, 2010). Opinion by Moore, joined by Mayer. Concurring opinion by Clevenger.
Because the undisputed evidence at a jury trial showed that the accused infringer’s computer system did not meet one of the limitations of the claims in issue, the Federal Circuit reversed the district court’s denial of the accused infringer’s motion for judgment as a matter of law of noninfringement.
Transamerica Life Insurance Company and related companies (collectively “Transamerica”) brought a declaratory judgment action for noninfringement and invalidity of Lincoln National Life Insurance Company’s (“Lincoln”) United States Patent No. 7,089,201 (“the ‘201 patent”). The ‘201 patent relates to computerized administration of variable deferred annuities that guarantee a minimum payment regardless of market activity. During the case, but after the cut-off date for amended pleadings, Transamerica attempted to amend and add a section 101 invalidity argument in light of the Federal Circuit’s In re Bilski decision. The district court denied this request, concluding that Transamerica had not diligently pursued its section 101 argument. At a jury trial, Lincoln won a verdict of infringement on Claim 35 and related dependent claims. The jury awarded Lincoln $13 million in damages. The trial court denied Transamerica’s subsequent motions for judgment as a matter of law (“JMOL”). On appeal, Transamerica challenged only the trial court’s denial of its (1) motion for JMOL of no infringement, and (2) motion for leave to add an invalidity claim based on § 101. Thus, claim construction and invalidity were not at issue on appeal.
The question of infringement centered on step (e) of Claim 35, which involves making payments “even if the account value is exhausted before all payments have been made.” The district court concluded that the limitation did not require actually exhausting the account value. Instead, it required payment regardless of account value, even after exhaustion. Undisputed evidence showed that Transamerica’s computerized annuities administration system stopped making payments when an account became exhausted. The Federal Circuit concluded that Lincoln failed to point to any evidence showing that Transamerica used a computerized system to make subsequent payments once the account was exhausted. Instead, it noted evidence indicating manual check production. The Federal Circuit also rejected an argument that infringement could be shown using Transamerica’s contractual obligations. Accordingly, the Court of Appeals reversed the district court’s denial of JMOL of noninfringement and vacated the permanent injunction.
Having reversed and remanded on the issue of infringement, the Court of Appeals concluded that there was no case or controversy between the parties and therefore need not reach the issue concerning whether the district court abused its discretion by denying Transamerica’s motion for leave to amend.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1403.pdf
Byron Holz is an Associate in the IP Group of Alston & Bird’s Atlanta office.
Litigation Practice and Procedure: Venue
Litigation Practice and Procedure: Procedure: Special Writs
In re Zimmer Holdings, Inc., et al., No. 10-M938 (Fed. Cir. (E.D. Tex.) June 24, 2010). Opinion by Gajarsa, joined by Rader and Friedman.
The Federal Circuit granted a petition for writ of mandamus requiring the district court to transfer this patent infringement case from the Eastern District of Texas to the Northern District of Indiana. The Court of Appeals ruled the Northern District of Indiana was more convenient because the accused infringer’s principal place of business is located in the Northern District of Indiana, most of the witnesses and documents were in the Northern District of Indiana, and the plaintiff’s ties to the Eastern District of Texas were a legal fiction.
Plaintiff MedIdea, LLC (“MedIdea”) sued Zimmer Holdings, Inc. and related entities (collectively “Zimmer”) for patent infringement in the Eastern District of Texas. Zimmer moved to transfer the case to the Northern District of Indiana. Based on MedIdea’s purported principal place of business in Longview, Texas, and a related case brought by MedIdea in the Eastern District of Texas, the district court denied the motion. Zimmer petitioned the Federal Circuit for a writ of mandamus.
Applying Fifth Circuit law and citing to recent decisions including In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008), the Federal Circuit concluded that the district court’s denial of Zimmer’s motion was clearly erroneous, and granted the petition for a writ of mandamus requiring transfer to the Northern District of Indiana. The Court of Appeals gave no deference to MedIdea’s alleged principal place of business in Longview Texas, concluding that it was a litigation contrivance. MedIdea was, for example, sharing office space with another of its trial counsel’s clients. MedIdea was incorporated in Michigan, and it was undisputed that MedIdea’s research, development, and patent prosecution took place in Michigan. In contrast, the Court of Appeals noted that the Northern District of Indiana included Zimmer’s principal place of business, contained at least eight identified witnesses, and was adjacent to the state of Michigan where MedIdea’s research had taken place. The Federal Circuit gave little weight to the related case, noting that both cases were in their early stages, involved no overlapping products or defendants, and included only one overlapping patent.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/2010-M938.6-24-10.1.pdf
Byron Holz is an Associate in the IP Group of Alston & Bird’s Atlanta office.
Character of a Patent: Statutory Subject Matter
Bilski v. Kappos, No. 08-964 (S. Ct., June 28, 2010) (Kennedy, J.) (Concurring opinions by Stevens, J. and Breyer, J.).
With a 5-4 majority, the court held that 35 U.S.C. §101 allows patenting of at least some business methods. The court also held that the Federal Circuit’s machine-or-transformation test is not the sole test for determining whether a claimed process is patent eligible under §101. The court did note that the machine-or-transformation test may be a useful and important tool for determining whether some claimed processes are patent eligible under §101. However, the court relied on its previous list of exceptions to patentable subject matter to find that the business method before it claimed an unpatentable “abstract idea.” Nevertheless, the machine-or-transformation test will likely continue to be used as a tool by courts and the United States Patent and Trademark Office (USPTO) in determining whether a claimed process is eligible under §101 for patent protection. The court’s opinion also appeared to acknowledge that software is patent-eligible subject matter.
The advisory is provided in PDF on the Alston & Bird website: http://www.alston.com/ip_advisory_bilski_ruling
Dane Baltich, Jeff Cooper, Chris Haggerty, and Jeff Young of Alston & Bird prepared the advisory in the attached link.
Patentable Invention: Anticipation: Generally
In re Giacomini, et al., No. 09-725, 737 (Fed.Cir. (B.P.A.I.) July 7, 2010).
Opinion by Rader, joined by Gajarsa and Dyk.
The Federal Circuit affirmed the decision of the Board of Patent Appeals and Interferences (the “Board”) that an application is correctly rejected under 35 U.S.C § 102(e) on the basis that the invention was described by a patent claiming priority to a U.S provisional application filed before said application.
Peter Joseph Giacomini, Walter Michael Pitio, Hector Francisco Rodriguez, and Donald David Shugard (collectively, “Giacomini”) filed U.S. Patent Application No. 09/725,737 (the “Giacomini application”) on November 29, 2000. The Giacomini application claims a technique for selectively storing electronic data in a readily accessible memory called a “cache.” The Federal Circuit affirmed the Board’s rejection of certain claims of the Giacomini application as anticipated by another patent, the Tran patent, claiming priority from a provisional application filed before the Giacomini application. In doing so, the Federal Circuit distinguished the holding in In re Hilmer, 359 F.2d 859 (CCPA 1966), from the instant case. In Hilmer, the Federal Court’s predecessor court held that a U.S. patent, cited as a § 102(e) prior art reference, was not effective as of its foreign filing date under § 119. The Federal Circuit concluded that Hilmer only distinguished a patent’s priority date under § 119 and effective reference date under § 102(e) in cases involving an earlier foreign application. The Federal Circuit noted that the 1994 amendment of § 119 to add § 119(e), as well as the distinction between an earlier foreign application, as discussed in Hilmer, and an earlier U.S. provisional application rendered Giacomini’s reliance on Hilmer misplaced.
The central issue in the appeal was the eligibility of the Tran patent to serve as prior art under 35 U.S.C § 102(e). The Federal Circuit concluded that the Board properly rejected the Giacomini application, noting that Giacomini did not dispute that the Tran patent described the same invention as the Giacomini application. The Federal Circuit also affirmed the Board’s conclusion that the provisional application from which the Tran patent claimed priority was the first U.S application. Finally, the appeals court concluded that Giacomini never argued that the Tran provisional failed to provide written description support for the claimed subject matter in accordance to § 119(e), thereby waiving the argument.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1400.pdf
Daniel Huynh is an Associate in the IP Group of Alston & Bird’s Charlotte office.
The Patent Application: Claims: Indefiniteness
Remedies: Damages: Reasonable Royalty
Claim Interpretation: Aids to Interpretation
Telecordia Techs, Inc. v. Cisco Systems, Inc., Nos. 09-1175,-1184 (Fed. Cir. (D. Del.) July 6, 2010). Opinion by Rader, joined by Lourie. Opinion dissenting in part by Prost.
The Federal Circuit affirmed the judgment of non-infringement by the United States District Court for the District of Delaware and held that the district court erroneously construed the term “empty payload fields,” which was the Federal Circuit’s basis for its denial of judgment as a matter of law motion regarding the invalidity of one of three asserted patents. The Federal Circuit remanded the case to provide the parties an opportunity to negotiate the terms of a royalty for future infringement damages on the other two patents.
Telcordia Technologies, Inc. (“Telcordia”) sued Cisco Systems, Inc. (“Cisco”), alleging infringement of U.S. Patent Nos. 4,893,306 (“the ‘306 patent”), 4,835,763 (“the ‘763 patent”), and RE 36,633 (“the ‘633 patent”). All three patents relate to the transmission of data in telecommunication networks. At trial, the jury found all three patents to be not invalid, found that Cisco willfully infringed the ‘763 and ‘633 patents, and awarded Telcordia $6.5 million in damages. In vacating the district court’s claim construction, the Federal Circuit concluded that the district court erred by limiting the claim scope based on an ad lib comment from the bench. The district court took an explanatory phrase from the bench made during a Federal Circuit oral argument in another case where Bell Communications, now known as Telcordia, was asserting the same ‘306 patent. The Federal Circuit found that the issue in the present case and the claim construction issue in the Bell Communication case are different, and thus the comments that the district court relied upon were not directly relevant to the specific issue in the present case.
The Federal Circuit affirmed the district court’s decision to deny Cisco’s motion for judgment as a matter of law finding that the means-plus-function was adequately disclosed in the ‘763 patent. Cisco alleged that specific claims in the ‘763 patent containing a monitoring means were indefinite because there were not properly supported in the patent’s specification. The district court found that ‘763 patent disclosed the structure for the monitoring means in a node-to-node communication system and held that the specification need only disclose an adequate defining structure to render the bounds of the claim understandable to an ordinary artisan.
In affirming the district court’s interpretation of the jury instruction for damages, the Federal Court observed that district courts are afforded broad deference to conclusions made as a fact finder. In the case below, the jury entered a verdict that did not distinguish whether Telcordia was compensated only for Cisco’s past infringement or for both past and ongoing infringement. The Federal Circuit concluded that the district court had broad discretion to interpret an ambiguous verdict form because the district court witnessed and participated in the jury trial process. Thus, the Federal Circuit affirmed the district court’s ruling directing the parties to negotiate the terms of an appropriate royalty for future infringement damages.
Judge Prost dissented from the majority’s affirmance of the district court’s ruling that the ‘763 patent was not invalid, arguing that because one who is skilled in the art would not be able to deduce from the patent’s disclosure a particular structure to perform the claimed function, the ‘763 patent was invalid as indefinite.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1175.pdf
Daniel Huynh is an Associate in the IP Group of Alston & Bird’s Charlotte office.
Litigation Practice and Procedure: Procedure: Generally
Avid Identification Sys., Inc. v. The Crystal Import Corp., et al., Nos. 09-1216, -1254 (Fed Circ. (E.D. Tex.) July 16, 2010). Per curiam opinion, before Rader, Newman, Mayer, Lourie, Bryson, Gajarsa, Linn, Dyk, Prost, and Moore. Opinion dissenting from denial of request for stay by Newman.
The Federal Circuit denied a motion to stay appellant’s petitions for rehearing where the motion to stay asserted that the court’s en banc consideration of a case addressing a related point of law would affect appellant’s grounds for rehearing.
In its prior decision, the Federal Circuit affirmed the judgment of the United States District Court for the Eastern District of Texas that U.S. Patent 5,235,326 (“the ‘326 patent”) belonging to Avid Identification Systems, Inc. (“Avid”) was unenforceable for inequitable conduct. Avid Identification Sys., Inc. v. Crystal Import Corp., 603 F.3d 967 (Fed. Cir. 2010) (“Avid II”). In Avid II, the Federal Circuit held that one of Avid’s corporate executives owed a duty of candor to the United States Patent and Trademark Office in relation to the ‘326 patent despite not being an inventor or a prosecuting attorney. A significant issue in Avid II was whether the information that Avid’s executive failed to disclose was material.
Following the Federal Circuit’s decision in Avid II, Avid filed petitions for rehearing and moved the court to stay its petitions until the court completed en banc consideration of another case addressing the issue of materiality in the context of inequitable conduct, TheraSense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1289 (Fed. Cir. 2010). The court denied Avid’s motion to stay in view of TheraSense and denied Avid’s petitions for rehearing.
Dissenting from the court’s decision to deny Avid’s motion to stay, Judge Newman noted that the court’s en banc review of TheraSense was poised to address the precise issue of Avid’s appeal-the criteria for inequitable conduct in patent prosecution and, in particular, the standard for materiality. Judge Newman argued that it was not unreasonable to expect that the court’s review of TheraSense would affect the Avid decision and, accordingly, the court should not rule on Avid’s motions for rehearing until its review of TheraSense was completed. Judge Newman also emphasized that the practice of staying related cases conserves judicial resources and prevents unequal treatment of other pending cases.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1216o.pdf
Avid II:
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1216.pdf
Christopher Kelly is an Associate in the IP Group of Alston & Bird’s Atlanta office.
Patentable Invention: Obviousness: Scope and Content of the Prior Art
Patentable Invention: Obviousness: Teaching, Suggestion, or Motivation in Prior Art
Patentable Invention: Obviousness: Secondary Considerations of Nonobviousness
Litigation Practice and Procedure: Procedure: Summary Judgment: Expert Testimony
Wyers v. Master Lock Co., No. 09-1412 (Fed. Cir. (D. Colo.) July 22, 2010).
Opinion by Dyk and concurring opinion Linn.
The Federal Circuit overturned a jury verdict of nonobviousness and reversed the district court’s denial of the accused infringer’s motion for judgment as a matter of law. In so ruling, the Court of Appeals relied heavily on the recent opinions in KSR and Perfect Web Technologies in finding a motion to combine prior art references based on common sense even though the accused infringer did not present expert testimony concerning a particular reference.
Master Lock Company LLC (“Master Lock”) appealed the final judgment of the United States District Court for the District of Colorado in favor of Philip W. Wyers and Wyers Products Group, Inc. (collectively “Wyers”). The three asserted patents, U.S. Patent No. 6,672,115 (“the ‘115 patent”), Claim 1 of U.S. Patent No. 7,165,426 (“the ‘426 patent”), and Claims 1, 9, and 11 of U.S. Patent No. 7,225,649 (“the ‘649 patent” or the “seal patent”), relate to trailer hitch locks used to secure trailers to towing vehicles. It was undisputed that the prior art disclosed the use of dumbbell-shaped locks to secure trailers. The relevant claims are directed to dumbbell-shaped locks with two additional elements: a series of sleeves that could be placed over the center section, the shank, in order to increase its diameter; and an external seal designed to keep dirt out of the locking mechanism. The issue at the jury trial was whether it was obvious to add these two elements to the prior art locks. Using a general verdict form, the jury concluded that Master Lock failed to show by clear and convincing evidence that the asserted claims were obvious. After the district court denied Master Lock’s motion for judgment as a matter of law on the issue of obviousness, Master Lock appealed.
In reversing the district court and finding the asserted claims obvious as a matter of law, the Federal Circuit relied heavily on the Supreme Court’s opinion in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007) and the Federal Circuit’s recent opinion in Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed. Cir. 2009). The parties did not dispute the scope of the claims in issue or the level of ordinary skill in the art. Accordingly, the appellate panel considered the primary factual questions before it: (1) whether the prior art references were in the same field of endeavor as the patented invention; (2) whether there was sufficient motivation to combine the references; and (3) the secondary considerations of nonobviousness. The Federal Circuit ruled that each of these factual issues supported a finding that the claims were obvious.
Regarding whether the prior art was analogous, the Court of Appeals cited both KSR and In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992), and ruled that the prior art padlocks were, at a minimum, “reasonably pertinent” to the problem the inventor was trying to solve.
In ruling there was a motivation to combine references even without expert testimony concerning one of the references, the Federal Circuit applied the “common sense” approach outlined in KSR and discussed in Perfect Web Technologies: “KSR and our later cases establish that the legal determination of obviousness may include recourse to logic, judgment, and common sense, in lieu of expert testimony.” Op. at 15. The Court of Appeals emphasized that an expert opinion may not be required in support of an obviousness determination where the technology, as in this case, was “easily understandable.” Op. at 16, 22.
Regarding secondary considerations of nonobviousness, the appellate panel ruled that the patentee failed to establish a nexus between the evidence of commercial success and the patented invention. Further, the Court of Appeals noted that in this case, the secondary considerations of nonobviousness simply could not overcome the strong prima facie case of obviousness.
In Judge Linn’s concurring opinion, he wrote separately to warn of the dangers of general verdicts relating to obviousness. He noted that although the law permits general verdicts, verdicts involving special interrogatories are encouraged in the obviousness context due to the mixed question of law and fact. Without special interrogatories, the Court of Appeals is left to infer whether substantial evidence existed from which the fact finder could have made the factual findings necessary to support the verdict. In Wyers, the appellate panel concluded the record could not support the inferences and therefore the claims at issue were obvious as a matter of law.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1412.pdf
Labriah Lee is an Associate in the IP Group of Alston & Bird’s Atlanta office.
Patentable Invention: Obviousness: Teaching, Suggestion, or Motivation in Prior Art
Patentable Invention: Double Patenting Claim Interpretation: Intrinsic Evidence: Generally
Sun Pharmaceutical Industries, Ltd. V. Eli Lilly & Co., No. 10-1105 (Fed. Cir. (E.D. Mich.) Jul. 28, 2010). Opinion by Prost, joined by Bryson and Gajarsa.
The Federal Circuit affirmed a finding that claims of Eli Lilly’s (“Lilly”) U.S. Patent No. 5,464,826 (“the ‘826 patent”) were invalid for obviousness-type double patenting over U.S. Patent No. 4,808,614 (“the ‘614 patent”).
Sun Pharmaceutical Industries, Ltd (“Sun”), a generic drug manufacturer, sought to market a generic version of Lilly’s Gemzar drug. To do so, Sun filed an application with the FDA and certified that both the ‘826 and ‘614 patents were invalid or not infringed. Shortly thereafter, Sun filed a declaratory judgment action against Lilly that the ‘826 patent is invalid and infringed. The district court granted Sun’s motion for partial summary judgment that the asserted claims of the later ‘826 patent were invalid for obviousness-type double patenting over the earlier ‘614 patent.
The ‘614 patent claims gemcitabine and methods of using gemcitabine to treat viral infections. The ‘826 patent claims a method of using gemcitabine for treating cancer.
The district court relied primarily on the decisions in Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373 (Fed. Cir. 2003) and Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353 (Fed. Cir. 2008) to find the ‘826 patent obvious over the ‘614 patent because the earlier ‘614 patent disclosed gemcitabine’s anticancer use. In both of those cases, the earlier patents claimed compounds and disclosed specific uses of the compounds. The later patents then claimed those previously disclosed methods of use and, according to the courts in Geneva and Pfizer, were therefore not patentably distinct.
The Federal Circuit found the Geneva and Pfizer cases controlling. Those cases set forth the rule that a “claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use.” The court rejected Lilly’s argument that the district court erred in consulting the specification of the earlier patent. The Federal Circuit reiterated that it is appropriate to consult the specification in an obviousness-type double patenting analysis to determine the claim scope when the patent claims a compound.
The Federal Circuit also rejected Lilly’s argument that the trial court erred in consulting the specification of the issued patent instead of the specification of the priority document, an earlier application. The earlier application did not disclose using gemcitabine for treating cancer. Lilly argued that the claim term should be given its ordinary and customary meaning at the time of the invention, which was when the earlier application was filed. The Federal Circuit, however, pointed out that claim construction precedent establishes that claim terms must be construed in light of the entire issued patent, not an early version of the specification. Finally, the Federal Circuit noted that policy behind double patenting supported consulting the specification of the issued patent, as opposed to an earlier version of the specification.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1105.pdf
Charles Basinger is an Associate in the IP Group of Alston & Bird’s Washington, D.C. office.
Claim Interpretation: Generally
Claim Interpretation: Ordinary Meaning
Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, Nos. 09-1053, -1111 (Fed. Cir. (D. Del.) Jul. 29, 2010). Opinion by Mayer, joined by Linn. Dissenting opinion by Gajarsa.
The Federal Circuit ruled that the district court incorrectly construed the “springs means” limitation and therefore reversed the district court’s judgment entering the jury verdict that Tyco Healthcare Group, LP (“Tyco”) infringed U.S. Patent No. 5,348,544 (“the ‘544 patent”).
Becton, Dickinson and Company (“Becton”) is the assignee of the ‘544 patent. The ‘544 patent relates to a safety needle designed to prevent accidental needle stick injures. On Dec. 23, 2002, Becton sued Tyco, alleging that Tyco’s safety needles infringed the ‘544 patent. Tyco argued that its safety needles did not literally infringe the ‘544 patent because they lack the separate spring member required by the asserted claims. A jury returned a verdict finding literal infringement by Tyco’s accused products.
On appeal, the Federal Circuit reiterated that to establish literal infringement, “every limitation set forth in a claim must be found in an accused product, exactly.” The Federal Circuit agreed with Tyco that its accused products did not literally infringe because they lacked the separate spring member required by the asserted claims.
The claim language at issue called for a “spring means connected to said hinged arm for urging said guard along said needle cannula toward” the tip of the needle. The Federal Circuit noted that the district court correctly construed this limitation following a Markman hearing to require that: “The hinged arm is connected to a spring that moves the guard along the cannula toward” the tip of the needle. According to the court, the plain terms of the construction contemplate that the spring means and the hinged arm are separate structures that are “connected to” each other. Although the court approved of the district court’s original construction, it held that the district court erred when it later held that its claim construction did not require a spring means that was a distinct structural element from the hinged arm.
Looking first to the claim language, the Federal Circuit held that the claim language requires a spring means that is separate from the hinged arm. Claim 1 contained four separate elements: (1) a needle, (2) a guard that rides on the needle, (3) a hinged arm attached to the guard, and (4) a spring means “connected to” the hinged arm. Where a claim lists elements separately, “the clear implication of the claim language” is that those elements are distinct components. The specification confirmed that the spring means was a separate structure from the hinged arm.
Next addressing Becton’s argument, the Federal Circuit ruled that Becton’s assertion that the spring means and hinged arm were one and the same led to a physical impossibility, namely, that the hinged arm must be “connected to” itself and must “extend between” itself and a mounting means. The Federal Circuit stated that a claim construction that renders asserted claims facially nonsensical “cannot be correct.” In doing so, the Federal Circuit also noted that the prior art would have invalidated the claims if the spring means and hinged arm were not separate.
In his dissent, Judge Gajarsa disagreed with the majority’s conclusion that the spring means and hinged arm must be separate. Notably, he accused the majority of improperly importing a limitation into the claims in violation of established canons of claim construction. He also disagreed with the majority’s interpretation of precedent related to construing separate claim elements. According to Judge Gajarsa, the court’s precedent is that term elements listed separately indicate that they connote different meanings, not that they refer to two different structures.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1053.pdf
Charles Basinger is an Associate in the IP Group of Alston & Bird’s Washington, D.C. office.
Patentable Invention: Anticipation: Inherency Defenses: Invalidity
Litigation Practice and Procedure: Jurisdiction: Subject Matter Jurisdiction
King Pharmaceuticals, Inc., et al. v. Eon Labs, Inc., et al., Nos. 09-1437, -1438 (Fed. Cir. (E.D.N.Y.) Aug. 2, 2010). Opinion by Gajarsa, joined by Bryson and Prost.
The Federal Circuit affirmed the district court’s grant of summary judgment of invalidity as to all claims in suit against King Pharmaceuticals (“King”), in part on alternative grounds. The Federal Circuit vacated the lower court’s order based on the plaintiff’s invalidity counterclaim against Elan Pharmaceuticals, Inc. (“Elan”), a third-party prior owner of one of the asserted patents, based on a lack of subject matter jurisdiction.
King sued Eon Labs (“Eon”) for infringement of U.S. Patent Nos. 6,407,128 (“the ‘128 patent”) and 6,683,102 (“the ‘102 patent”) when Eon filed an Abbreviated New Drug Application (“ANDA”) for a generic 800 mg metaxalone tablet. Metaxalone was first discovered in the 1960s and is used to treat musculoskeletal pain. The ‘128 patent was directed to a method for increasing the bioavailability of metaxalone by administration of an oral dosage form with food. The ‘102 patent is also directed to methods of using metaxalone in the treatment of musculoskeletal conditions. All of the asserted claims involved increasing the bioavailability of metaxalone by ingesting the drug with food.
The district court granted summary judgment that the asserted claims of the ‘128 patent were inherently anticipated by the prior art. The prior art disclosed administering metaxalone with food. Taking metaxalone with food was claimed in the ‘128 patent as a method for increasing the bioavailability of the drug. The Federal Circuit affirmed the lower court’s holding that Claims 1, 4-6, 12-14, and 18-20 were inherently anticipated, as the prior art gave the same results as the claims regardless of whether the prior art recognized the benefits of taking metaxalone with food.
The Federal Circuit reversed the district court’s finding that Claim 21 was invalid under 35 U.S.C. § 101, but held the claim invalid as inherently anticipated. Claim 21 teaches a method of administering metaxalone with food, with the additional limitation of ‘informing’ the patient that such treatment increases the bioavailability of the drug. The Federal Circuit held that the lower court improperly focused on the “informing” limitation in making its determination, rather than reading the claim as a whole. The Federal Circuit held Claim 21 invalid as inherently anticipated because adding the limitation of “informing” someone about the inherent property of a method did not make an otherwise anticipated method patentable.
The Federal Circuit further held Claim 22 invalid for the same reasons that it held Claim 21 invalid. Claim 22 included the limitation of placing the metaxalone in a container with printed labeling advising of the benefits of taking the drug with food. The Federal Circuit held that the labeling limitation was not functionally related to either the product or the claimed method as a whole, and therefore the district court’s finding of invalidity was correct.
The Federal Circuit held the asserted claims of the ‘102 patent invalid for the same reasons that it found the claims of the ‘128 patent invalid. Additionally, the Federal Circuit held that King failed to establish secondary indicia of nonobviousness for asserted Claim 5 of the ‘102 patent, as King did not show any nexus between the drug’s commercial success and the invention in Claim 5.
Finally, the Federal Circuit held that there was no subject matter jurisdiction to support the district court’s final order against Elan declaring the patents invalid. Elan initially sued Eon for infringement, but then transferred its rights in both the ‘128 patent and the ‘102 patent application to King. Elan’s suit was subsequently dismissed when Eon withdrew its 400 mg metaxalone ANDA that triggered Elan’s suit. Moreover, Elan made statements after the transfer of rights, including in pleadings in the case below, that Elan waived any rights it might have against Eon based on Elan’s interest in the ‘128 or ‘102 patents. The Federal Circuit held that no actual case or controversy existed between Elan and Eon regarding the patents, and accordingly vacated the district court’s order as entered against Elan.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1437.pdf
Jennifer Liotta is an Associate in the IP Group of Alston & Bird’s Atlanta office.
Character of a Patent: Attributes of Ownership: Generally
Litigation Practice and Procedure: Procedure: JMOL Procedure
Litigation Practice and Procedure: Jurisdiction: Standing
Litigation Practice and Procedure: Procedure: Waiver
Enovsys LLC v. Nextel Communications, Inc., et al., No. 09-1167 (Fed Cir. (C.D. Cal.) Aug. 3,
2010). Opinion by Prost, joined by Bryson. Opinion concurring-in-part and dissenting-in-part by Newman.
The Federal Circuit held that the plaintiff, Enovsys LLC (“Enovsys”), had standing to sue defendants for infringement of U.S. Patent No. 6,560,461, and also affirmed the district court claim constructions.
Enovsys obtained a jury verdict that Nextel’s iDEN and CDMA networks infringed two patents. Nextel Communications, Inc. (“Nextel”) challenged this verdict, asserting both that Enovsys was not the sole owner of the asserted patents, and that the district court erred in construing numerous claims. The district court denied Nextel’s motion for judgment as a matter of law, and Nextel appealed.
First, the Federal Court held that Enovsys was the sole owner of both in-suit patents and therefore had standing to assert the patents against Nextel. The court rejected Nextel’s argument that the ex-wife of one of the co-inventors of the patents had an ownership interest in the patents, and therefore Enovsys was required to join her as a plaintiff. The Federal Circuit held that under California law, which governed the ownership of the asserted patents, the ex-wife did not have an ownership interest in the patents because the ex-wife and the inventor had represented in their divorce decree that they had no community property.
Next, the Federal Circuit affirmed the claim constructions Nextel challenged on appeal. The court held that Nextel had waived all of its claim construction arguments for two reasons. First, Nextel improperly failed to object to the court’s construction of two terms until after the jury verdict. Second, Nextel improperly waited until after the verdict to propose a construction for a previously-unconstrued limitation.
Accordingly, the Federal Circuit affirmed the district court’s claim constructions and denial of Nextel’s motion for judgment as a matter of law.
Judge Newman concurred in the majority’s ruling regarding standing, and dissented as to the ruling regarding defendant’s waiver of defenses. In particular, Judge Newman stated that the majority incorrectly characterized defendants’ appeal as a claim construction appeal when it was actually an appeal on infringement. Newman stated that, as a result, defendants were improperly barred from seeking judicial review of infringement.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1167.pdf
Jennifer Liotta is an Associate in the IP Group of Alston & Bird’s Atlanta office.
Claim Interpretation: Intrinsic Evidence: Prosecution Disclaimer
Claim Interpretation: Intrinsic Evidence: Importing Limitations
from the Specification into Claims Infringement: Doctrine of
Equivalents: Prosecution History Estoppel: By Amendment
Intervet Inc. v. Merial Ltd., et al., No. 09-1568 (Fed. Cir. (D.D.C.) Aug. 4, 2010). Opinion by Prost, joined by Bryson. Opinion concurring-in-part, dissenting-in-part filed by Dyk.
The Federal Circuit reversed the district court’s finding of noninfringement based on its construction of six claim terms, and further held that the district court misapplied the law of prosecution estoppel.
Merial Limited and Merial SAS (collectively “Merial”) own U.S. Patent No. 6,368,601 (“the ‘601 patent”), which is directed to DNA constructs encoding a type of porcine circovirus (“PCV”). Porcine circoviruses known to the scientific community prior to Merial’s filing were not observed to be pathogenic; this type of known PCV was referred to in the application leading to the ‘601 patent as porcine circovirus type 1, or “PCV-1.” The application was directed to the discovery of a previously unknown pathogenic type of porcine circovirus (porcine circovirus type 2, or “PCV-2”) that researchers at Merial discovered were associated with a disease affecting livestock pigs. The ‘601 patent identifies five strains of porcine virus as representative of the PCV-2 type, and Merial deposited these five strains with the Patent and Trademark Office as part of the description of the invention.
One of the deposited sequences is 99.7% homologous to a nucleotide sequence in Intervet Inc.’s (“Intervet”) Porcine Circovirus Vaccine Type 2. Intervet filed a suit for declaratory judgment that its vaccine does not infringe the ‘601 patent. Merial counterclaimed for infringement of the ‘601 patent. At claim construction, the district court construed “porcine circovirus type II” as limited to the five strains identified in the patent. The court further construed “ORFs 1-13” as limited to the thirteen gene portions (called open reading frames, or “ORFs”) disclosed in Example 13 of the patent specification. Finally, the district court construed Claim 32 in its entirety to refer (in part) to a construct comprising at least one DNA molecule that is unique to one of the five PCV-2 sequences placed on deposit. The lower court then entered summary judgment of noninfringement based on these claim constructions, and held that prosecution history estoppel barred Merial from arguing that Intervet’s vaccine infringed under the doctrine of equivalents.
The Federal Circuit reversed the lower court on all points. First, the Federal Circuit held that the lower court improperly imported limitations from the specification into the terms “porcine circovirus type II” and “ORFs 1-13.” First, The Federal Circuit held that “porcine circovirus type II” was not limited to the five deposited sequences. The patent stated that the five strains were representative of a type of PCV, and therefore the five strains did not constitute the scope of the invention, which claimed all PCVs in the type 2 category. The Federal Circuit construed “porcine circovirus type II” according to the homology boundaries disclosed in the patent.
Next, the Federal Circuit held that the lower court’s construction of “ORFs 1-13” was improperly limited to Example 13 in the specification. The specification stated that Example 13 included representative ORFs, but that variation was expected. The Federal Circuit then construed the term to include ORFs that correspond to the ORFs identified in the specification, a construction that would be understood by one of ordinary skill in the art, and would allow for some variability.
Next, the Federal Circuit agreed with Merial that while the court’s construction of Claim 32 was proper, the district court improperly imported a manufacturing requirement into Claim 32 during its subsequent infringement analysis. The Federal Circuit held that the claim did not require that the claimed nucleotide be derived from a PCV-2 virus, rather than be derived from a non-PCV-2 source.
The Federal Circuit also held that the district court was correct that Merial’s application contained a narrowing amendment; the lower court misapplied the doctrine of prosecution history estoppel. The Federal Circuit held that Merial’s relevant amendment was meant to narrow the claimed universe of ORFs down to those of PCV-2. However, the Federal Court held that Merial was not estopped from arguing that a pathogenic porcine viral sequence with over 99% nucleotide homology with one of the five representative strains, such as in Intervet’s vaccine, is equivalent to that strain. Accordingly, the court reversed the lower court’s claim construction, vacated the entry of summary judgment of noninfringement, and remanded to the district court to determine if Intervet’s product infringes the asserted claims of the ‘601 patent.
Dyk authored an opinion concurring-in-part and dissenting-in-part. Dyk agreed with the majority’s construction of Claim 32. He stated that while Claim 32’s patentability was not an issue before the Appeals Court, the claim raises substantial issues of patentable subject matter under 35 U.S.C. § 101. Dyk wrote further to dissent from the majority’s construction of “ORFs 1-13,” stating that based on the intrinsic evidence, this term should be limited to the ORFs of the five disclosed strains.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1568.pdf
Jennifer Liotta is an Associate in the IP Group of Alston & Bird’s Atlanta office.
Claim Interpretation: Intrinsic Evidence: Prosecution Disclaimer
Claim Interpretation: Intrinsic Evidence: Importing Limitations from the Specification into Claims
Infringement: Doctrine of Equivalents: Generally
Adams Respiratory Therapeutics, Inc., et al. v. Perrigo Co., et al., No. 10-1246 (Fed. Cir. (W.D. Mich.) Aug. 5, 2010). Opinion by Moore, joined by Linn and Friedman
The Federal Circuit reversed the district court’s grant of summary judgment, holding that Perrigo Co (“Perrigo”) did not infringe U.S. Patent No. 6,372,252 (“the ‘252 patent”). The Federal Circuit reversed the lower court’s determination of noninfringement based on the “equivalent” limitation and under the doctrine of equivalents, and affirmed the lower court’s denial of summary judgment of noninfringement based on the “bioavailable” limitation.
Adams Respiratory Therapeutics (“Adams”) sued Perrigo for infringing the ‘252 patent when Perrigo filed an Abbreviated New Drug Application (“ANDA”) for a 600 mg guaifenesin extended-release tablet. The ‘252 patent is directed to an extended release formulation of guaifenesin.
First, the district court construed the claim term “equivalent” to include the FDA’s bioequivalence guidelines, i.e., “within 80% to 125% of the value with which it is being compared, at a 90% confidence interval.” This construction was based on statements regarding the meaning of “equivalent” by Adams at a prior re-examination proceeding. The Federal Circuit agreed with Adams that “equivalent” required 80% to 125% of the value with which it was being compared, but that the 90% confidence interval was not adopted by Adams during re-examination. Accordingly, the Federal Circuit held that the district court improperly imported the 90% confidence level limitation into the “equivalent” claim term.
Next, the Federal Circuit agreed with Adams that Adams was not foreclosed from establishing infringement of Claim 34 under the doctrine of equivalents for a claim that recited a product that released “at least 3500 hr*ng/mL” into the patient’s system. The Federal Circuit clarified that the doctrine of equivalents may still apply to claims containing specific numeric ranges, absent more limiting language in the intrinsic record. The Federal Circuit held that Adams had submitted sufficient evidence upon which a fact finder could conclude that Perrigo’s ANDA product was insubstantially different from the “at least 3500 hr*ng/mL” limitation in the claim at issue. Accordingly, the Federal Circuit vacated the district court’s grant of summary judgment of noninfringement of Claim 34 based on the doctrine of equivalents.
Lastly, the Federal Circuit reversed the district court’s determination that Adams could not show infringement by showing that Perrigo’s ANDA product was bioequivalent to Mucinex®, Adam’s product that embodied the ‘252 patent. The Federal Circuit held that a party is permitted to establish infringement by comparing an accused product to a patent claim’s commercial embodiment where the commercial embodiment meets all of the asserted claim limitations. The Federal Circuit held that under the correct claim construction, Adam had put forth evidence that raised a genuine issue of material fact on infringement that precluded summary judgment of noninfringement. Accordingly, the Federal Circuit remanded the case for further proceedings consistent with its opinion.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1246.pdf
Jennifer Liotta is an Associate in the IP Group of Alston & Bird’s Atlanta office.
Defenses: Fraud and Inequitable Conduct: Intent to Deceive
Claim Interpretation: Generally
Defenses: Generally
Ring Plus, Inc. v. Cingular Wireless Corp., et al., No. 09-1537 (Fed. Cir. (E.D. Tex.) Aug. 6, 2010). Opinion by
Moore, joined by Lourie and Gajarsa.
The Federal Circuit affirmed both the lower court’s grant of summary judgment that defendants did not infringe U.S. Patent No. 7,006,608 (“the ‘608 patent”), and the denial of Ring Plus Inc.’s (“Ring Plus”) motion to disqualify counsel. However, the Federal Circuit reversed the district court’s judgment that the ‘608 patent was unenforceable for inequitable conduct.
Ring Plus is the assignee of the ‘608 patent, which discloses a software-based algorithm and method for generating and delivering messages over a phone line during a “ringing signal” period. Independent Claim 1 claims a software based algorithm for operation of a telephone system in which a generated sound presentation can replace or overlay a ring-back signal. Independent Claim 9 recites a method with limitations generally analogous to those of Claim 1. Ring Plus accused defendants’ (collectively “Cingular”) “Answer Tones” ring-back service of infringing the ‘608 patent.
First, the district court granted summary judgment of noninfringement after determining that the accused service did not perform a sequence as required by the claims. Ring Plus did not appeal the district court’s determination that the sequence of steps was required, but argued that the court erred in construing two limitations. The Federal Circuit rejected Ring Plus’s proposed claim constructions because they both (1) conflicted with the required order of the claimed steps, and (2) lacked support in the specification. Accordingly, the Federal Circuit affirmed the district court’s construction of the disputed claim terms and the district court’s judgment of noninfringement.
Next, the Federal Circuit rejected Ring Plus’s argument that the district court erred in denying Ring Plus’s motion to disqualify Cingular’s counsel. Ring Plus argued that Cingular’s counsel should have been disqualified for improperly contacting a Ring Plus employee. Applying the law of the Fifth Circuit, the Federal Circuit held that the district court did not err in refusing to disqualify Cingular’s counsel. Ring Plus argued that Cingular’s counsel had improperly communicated with a current director of Ring Plus. The individual in question had contacted Cingular’s counsel offering to give information about Ring Plus. Cingular’s counsel contacted Ring Plus’s lead counsel to determine if the individual was affiliated with Ring Plus. While the parties disputed the contents of the phone call, it is undisputed that Ring Plus never responded to Cingular’s letter memorializing Cingular’s understanding, based on the call, that the individual was not affiliated with Ring Plus. Cingular’s counsel instructed the individual not to divulge Ring Plus privileged information, and Ring Plus refused to accept service for the individual’s deposition. The Federal Circuit held that the district court properly applied relevant Fifth Circuit law and held that the district court did not abuse its discretion in denying Ring Plus’s motion to disqualify.
Lastly, the Federal Circuit vacated the district court’s order that the ‘608 patent was unenforceable for inequitable conduct. The district court’s order was based on its finding that the applicants made two material misrepresentations of fact in its Amendment B and Background statement. The Federal Circuit held that the district court erred in finding that the applicant’s Amendment B contained a misrepresentation because Amendment B was correct that two prior art references did not disclose a contested claim limitation.
However, the Federal Circuit held that the district court did not clearly err in holding that the background statement in the application included a material misrepresentation. The material misrepresentation consisted of a statement that two prior art references did not disclose software, contrary to the district court’s determination that these references implicitly disclosed software to one of ordinary skill in the art. However, the Federal Circuit reversed the district court’s determination that the material misrepresentation was specifically intended to deceive the USPTO. The Federal Circuit held that sufficient intent was lacking because both (1) the disclosure of software in the two references was ambiguous, and (2) there was other evidence to support the inference that the applicants did not believe the references disclosed software. Accordingly, the Federal Circuit reversed-in-part and affirmed-in-part the district court’s final judgment.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1537.pdf
Jennifer Liotta is an Associate in the IP Group of Alston & Bird’s Atlanta office.
Defenses: Fraud and Inequitable Conduct: Materiality
Defenses: Fraud and Inequitable Conduct: Intent to Deceive
Infringement: Generally
Golden Hour Data Systems, Inc. v. emsCharts, Inc., et al., Nos. 09-1306, 09-1396 (Fed. Cir. (E.D. Tex.) Aug. 9, 2010). Opinion by Dyk, joined by Friedman. Dissenting opinion by Newman.
In affirming the district court’s judgment as a matter of law overturning the jury verdict of joint infringement, the Federal Circuit held there was insufficient evidence of “control” or “direction” by defendants to find joint infringement. The Federal Circuit also vacated the district court’s finding of inequitable conduct and remanded the case for further proceedings because there was insufficient evidence to establish intent to deceive.
Golden Hour Data Systems, Inc. (“Golden Hour”) sued emsCharts, Inc. (“emsCharts”) and Softtech, LLC (“Softtech”) for infringement of various claims of U.S. Patent No. 6,117,073 (“the ‘073 patent”), which is directed to information management services for emergency medical transport. The ‘073 specification identified AeroMed as the system most similar to the invention, but stated that AeroMed “does not provide comprehensive integration of the flight information with a clinical diagnosis, billing system and administration system.” During prosecution, Golden Hour submitted an Information Disclosure Statement quoting the cover of an AeroMed brochure without disclosing that the interior of the brochure described AeroMed as an integrated billing system.
At trial, the jury found that emsCharts directly infringed Claims 10 and 12-14 and emsCharts and Softtech jointly infringed Claims 1, 6-8, and 15-22. The district court granted defendants’ motion for judgment as a matter of law, ruling that there was insufficient evidence of “control” or “direction” to sustain the jury verdict. The district court also held a bench trial on inequitable conduct, finding that the brochure describing the AeroMed system was material to the patentability of the ‘073 patent because it disclosed “integration” and “billing” and was inconsistent with how Golden Hour described the system. The district court also found that Golden Hour’s selective disclosure of the contents of the brochure evidenced intent to deceive the Patent and Trademark Office (“PTO”) and therefore ruled the patent unenforceable because of inequitable conduct.
The Federal Circuit affirmed the district court’s ruling that the brochure was material, rejecting the argument that the fact that the brochure did not establish its prior art status on its face precluded a finding of materiality. In affirming the ruling, the Federal Circuit noted that the brochure contradicted Golden Hour’s representations to the PTO and therefore the brochure could have materially affected patentability.
The Federal Circuit vacated the district court’s ruling that Golden Hour intended to deceive the PTO because the district court failed to provide detailed factual findings with respect to whether Golden Hour read the entire brochure, whether the brochure was deliberately withheld, and whether Golden Hour deliberately refused to read the brochure.
The Federal Circuit affirmed the district court’s ruling that the evidence of control or direction was insufficient as a matter of law to uphold the jury’s finding of joint infringement without discussion.
Judge Newman dissented, agreeing with the majority that deceptive intent was not supported by the record, but stating that it was inappropriate for the court to remand the case to allow defendants to supplement the record on this issue. Judge Newman also disagreed that the brochure was material to patentability because it was published a few weeks after the patent application was filed and was found not to be invalidating prior art by the jury.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1306.pdf
Matt McNeill is an Associate in the IP Group of Alston & Bird’s Atlanta office.
Claim Interpretation: Intrinsic Evidence: Specification
Claim Interpretation: Means-Plus-Function
Infringement: Literal Infringement
Litigation Practice and Procedure: Procedure: Admissibility of Evidence
Baran v. Medical Device Techs., et al., No. 10-1058 (Fed. Cir. (N.D. Ohio) Aug. 12, 2010). Opinion by Bryson, joined by Gajarsa and Prost.
The Federal Circuit affirmed the claim construction rendered by the U.S. District Court for the Northern District of Ohio. The Federal Circuit also affirmed summary judgment of noninfringement because the accused products did not satisfy the means-plus-function limitation of “release means for retaining the guide in the charged position.”
Dr. Gregory W. Baran sued the defendants (collectively “MDTech”) for infringement of two patents, U.S. Patent Nos. 5,025,797 (“the ‘797 patent”) and 5,400,798 (“the ‘798 patent”), directed to automated biopsy instruments. After the district court construed the terms “detachable” and “releasably,” Dr. Baran stipulated that MDTech did not infringe the ‘798 patent under the court’s construction. The district court then granted summary judgment of noninfringement for the only asserted claim of the ‘797 patent because the accused devices did not satisfy the “member” or “release means” limitations.
The Federal Circuit affirmed the district court’s construction of the terms “releasably” and “detachable,” ruling that Claim 2 did not have to be construed to cover both embodiments disclosed in the specification because it is not necessary that each claim read on every embodiment. The court held that “detachably” need not be construed to cover both embodiments because the patentee used different language to describe the single-use and the reusable embodiments of the invention and used the term “detachably” to distinguish the reusable embodiment from the single-use embodiment.
The Federal Circuit affirmed summary judgment of noninfringement of the ‘797 patent because no reasonable juror could find that the accused device satisfied the means-plus-function limitation of “release means….” The court held that despite the fact that “release” preceded the “means” clause, it was a purely functional description and thus part of the functional recitation of the means-plus-function limitation. The court also held that the district court did not err in concluding that the accused structure was not equivalent to the structure described in the specification because the two structures relied on opposing principles: one structure required rigidity to release the locking tab and the other structure required flexibility to release the locking tab.
The Federal Circuit also affirmed the district court’s striking of portions of Dr. Baran’s declaration because it was not filed in accordance with the case management schedule. In so ruling, the court noted that even though Dr. Baran was not designated as an expert, the declaration contained expert opinions and therefore needed to be filed according to the schedule for expert reports.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1058.pdf
Matt McNeill is an Associate in the IP Group of Alston & Bird’s Atlanta office.
Patentable Invention: Obviousness: Scope and Content of Prior Art
Patentable Invention: Obviousness: Secondary Considerations of Nonobviousness
Geo M. Martin Co., et al. v. Alliance Mach. Sys. Int’l LLC, Nos. 09-1132, -1151 (Fed. Cir. (N.D. Cal.) Aug. 20, 2010). Opinion by Rader, joined by Archer and Prost.
The Federal Circuit affirmed the district court’s finding that U.S. Patent No. 6,655,566 (“the ‘566 patent”) was invalid due to obviousness because the differences between the prior art and the claimed improvement were minimal.
Plaintiff The Martin Family Trust (“the Trust”) is the assignee of the ‘566 patent, which relates to an improvement over a machine used to separate stacked sheets of corrugated board called a bundle breaker. Plaintiff George M. Martin Co. (“the Martin Co.”) sells a product that incorporates the invention claimed in the ‘566 patent. Defendant Alliance Machine Systems International LLC (“Alliance”) is Martin’s main competitor. The Trust and the Martin Co. (collectively “Martin”) allege that Alliance’s products infringe the ‘566 patent. Following a trial for patent infringement that resulted in a hung jury, the district court granted Alliance’s motion for judgment as a matter of law on the issue of validity, ruling that the evidence on primary considerations and secondary considerations largely favors obviousness of the patented invention. Martin appealed this ruling.
In affirming the district court’s ruling of obviousness, the Federal Circuit held that the district court correctly concluded as a matter of law that the differences between the prior art and the claimed improvement were minimal. The patented design uses top-down pneumatic pistons to hold the bundles in place. The prior art design uses bottom-up pneumatic pistons. In arguing nonobviousness, Martin’s expert pointed out that it would not work to simply flip the prior art design on its head. The Court of Appeals rejected Martin’s arguments based on testimony that demonstrated there were only a discrete number of possible design options, and the design set forth in the ‘566 patent is the type of finite number of identified, predictable solutions that justifies a legal conclusion that the result is due to ordinary skill and common sense.
The Federal Circuit also held that the district court correctly concluded that evidence of secondary considerations in this case do not create a reasonable dispute as to obviousness. In affirming the district court’s ruling, the Court of Appeals held that Alliance conclusively established that much of Martin’s commercial success was due to Martin’s pre-existing market share in the stacker market. In addition, the Federal Circuit stated that where the differences between the prior art and the claimed invention are as minimal as they are here, it cannot be said that any long-felt need was unsolved because the “need” was met by the prior art. The Court of Appeals held that Martin’s evidence of industry praise and copying was unpersuasive and likely attributed to other factors. Finally, the Federal Circuit ruled the trial court was correct to conclude that evidence of simultaneous invention in the art was persuasive evidence that the claimed apparatus was only the product of ordinary skill in the art.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1132.pdf
Deepa Nama is an Associate in the IP Group of Alston & Bird’s Washington, D.C. office.
Patentable Invention: Obviousness: Secondary Considerations of Nonobviousness
The Patent Application: Specification: Enablement Requirement
Infringement: Generally
Infringement: Willful Infringement
Litigation Practice and Procedure: Prior Adjudication: Issue Preclusion (Collateral Estoppel)
Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., No. 09-1556 (Fed. Cir. (S.D. Tex) Aug. 18, 2010). Opinion by Moore, joined by Gajarsa and Mayer.
The district court made a number of rulings in the accused infringer’s favor on summary judgment, including ruling that the asserted claims are invalid for obviousness and lack of enablement, and not infringed by the accused oil drilling rig. The Federal Circuit reversed the district court’s ruling of obviousness because the trial court failed to consider the objective evidence of nonobviousness. The Federal Circuit also reversed the district court concerning enablement because there are genuine issues of material fact concerning undue experimentation. Regarding infringement, the Court of Appeals reversed the district court while ruling that an offer made outside the United States by a U.S. company to a U.S. company to sell a product within the United States, for delivery and use within the United States, constitutes an infringing offer to sell within the United States under § 271(a). The Federal Circuit affirmed the district court’s summary judgment ruling that the patentee was collaterally estopped from arguing that the accused oil rig, as delivered, infringed because the accused infringer made modifications to the rig consistent with a prior court’s ruling of noninfringement. The Federal Circuit also affirmed the district court’s ruling of no willful infringement.
Transocean Offshore Deepwater Drilling, Inc. (“Transocean”) accused Maersk Contractors USA, Inc. (“Maersk”) of infringing claims in three of its patents, all of which relate to an improved drilling rig for offshore drilling. Maersk contracted with another U.S. company, Statoil Gulf of Mexico (“Statoil”), for Statoil’s use of the accused rig. The companies signed the agreement while representatives were physically present in Norway. The contract specified, among other things, that the operating area for the rig was in the U.S. Gulf of Mexico and other areas. Maersk specifically retained the right to make alterations to the accused rig “in view of court or administrative determinations throughout the world.” One of these “determinations” came when Transocean asserted the same patent claims in issue against a different company, GlobalSantaFe Corporation, in federal court in the S.D. of Texas (“the GSF litigation”). In that case, Transocean prevailed and the trial court issued an injunction requiring the infringer to make modifications to the infringing oil rig in order for the rig to be noninfringing. Thus, prior to delivery of the rig to Statoil, Maersk implemented the same modifications ordered in the earlier case and argued that its rigs, therefore, could not infringe. In addition, Maersk argued that the claims in issue were invalid for obviousness and lack of enablement.
After determining there was no sale or offer to sell under 35 U.S.C. § 271(a), the district court granted summary judgment of noninfringement in favor of Maersk. The district court also ruled that Transocean was collaterally estopped from arguing that the modified rig infringed the patent claims because the design was adjudicated as noninfringing in the GSF litigation. The trial court further ruled that the claims in issue were invalid for obviousness and lack of enablement, and there was no willful infringement. Transocean appealed.
The district court’s noninfringement ruling rested on a finding that there was no offer for sale or sale within the United States because the contract at issue was negotiated and signed outside of the United States. The Federal Circuit disagreed. The Court of Appeals held that the “offer for sale” and “sale within the United States” provisions of 35 U.S.C. § 271(a) cover a contract between two U.S. companies for performance in the United States, regardless of whether it was negotiated or signed when the two companies were abroad. Further, the Federal Circuit ruled that when determining whether there was an infringing sale, the alteration of the accused product after execution of the contract was irrelevant. Rather, the potentially infringing article is the rig specified in the contract at the time of the sale, not the altered rig that Maersk USA delivered to the United States. Accordingly, the Federal Circuit vacated the finding of no infringement and remanded because there were genuine issues of material fact as to infringement of the unmodified rig at the time of the offer for sale and sale.
The Federal Circuit did, however, affirm the district court’s ruling that Transocean was collaterally estopped from arguing Maersk’s modified rig infringed the asserted claims. Prior to delivering the rig to the United States, Maersk made the same modification the district court required in the injunction entered in the GSF litigation. The Federal Circuit concluded that the infringement issue in this case was identical to the one in the prior GSF litigation. Hence, Transocean was estopped from arguing that rigs modified in accordance with the injunction of the prior GSF litigation infringed any of the asserted claims.
In ruling on willful infringement, the Federal Circuit concluded that although the contract does show that Maersk knew of Transocean’s patent, it also shows intent to avoid infringement because Maersk reserved the right to modify the rig in response to any court proceeding. The panel affirmed the district court’s ruling of no willful infringement.
Regarding invalidity, the Federal Circuit agreed with the district court that the prior art references presented by Maersk combined to present a prima facie case of obviousness. But the Federal Circuit noted that Transocean presented significant objective evidence of nonobviousness, including industry skepticism about a dual drill string approach, industry praise for its dual activity rig, copying, and commercial success. Because it appeared that the district court did not consider the objective evidence of nonobviousness, and because the objective evidence created genuine issues of material fact, the Court of Appeals reversed the grant of summary judgment of invalidity based on obviousness.
The Federal Circuit also reversed the grant of summary judgment of invalidity for lack of enablement, ruling that the district court erroneously required Transocean to enable the most efficient commercial embodiment rather than the claims. In particular, the Court of Appeals noted that while the patent must enable one of ordinary skill in the art to practice the claimed invention without undue experimentation, it does not need to enable the most optimized configuration unless such configuration is an explicit part of the claims.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1556.pdf
Deepa Nama is an Associate in the IP Group of Alston & Bird’s Washington, D.C. office.
Infringement: Generally
Pass & Seymour, Inc., v. International Trade Commission, et al., Nos. 09-1338, -1369 (Fed. Cir. (I.T.C.) Aug. 27,
2010). Opinion by Prost, joined by Dyk. Concurring opinion by Newman.
The Federal Circuit affirmed the determinations of the United States International Trade Commission (“the Commission”), holding that the Commission’s claims construction and noninfringement findings were correct.
Pass & Seymour, Inc. (“Pass & Seymour”) filed a complaint with the International Trade Commission, alleging that General Protecht Group, Inc., Wenzhou Trimone Science and Technology Electric Co., Ltd., and Shanghai ELE Manufacturing Corp. infringe U.S. Patent Nos. 5,594,398 (“the ‘398 patent”) and 7,212,386 (“the ‘386 patent”), among other patents. The asserted patents and accused products at issue all relate to circuit interrupters for use with household electrical appliances. Such circuit interrupters are typically recognized by the characteristic “test” and “reset” buttons that are found on household electrical outlets. More specifically, the ‘398 patent relates to improved ground fault circuit interrupters, which are common devices that protect users from electrical shocks when they are operating appliances plugged into household electrical outlets. The other asserted patent, the ‘386 patent, relates to a device that protects users and appliances from damage caused by miswiring. The purported invention of the ‘386 patent generates different types of signals in response to different operating conditions. For example, the device generates a “wiring state detection signal” when at least one line is connected to a source of AC power.
The asserted claims were construed by an administrative law judge (“ALJ”), who adopted Pass & Seymour’s proposed claim construction of the disputed claim terms. Based on the adopted constructions, the ALJ found that the products at issue infringed the asserted claims. On review, the Commission modified the ALJ’s constructions of certain terms, and as a result, found that the accused devices did not infringe the construed claims, as modified.
On appeal, the Federal Circuit upheld the modified constructions adopted by the Commission and likewise upheld the Commission’s finding that the accused devices did not infringe either the ‘386 or ‘389 patents. With respect to the ‘389 patent, the Federal Circuit held that the accused products did not infringe because the plain language of the asserted claims required that a “pair of contacts” move into a “spaced, circuit-breaking” position, and only one of the contacts in the accused products moved into a spaced, circuit breaking position.
With respect to the ‘386 patent, the ALJ held that a claim term directed to a “circuit interrupter” did not require construction and could be analyzed according to its plain meaning. On review, the Commission agreed with the ALJ, and construed the asserted claims to require that the accused circuits be configured to trip in response to a signal that the device is properly wired. In so holding, the Commission acknowledged that such a claim requirement was not perfectly logical, and may have been the result of a claim drafting error. However, despite such logical impression, because the accused device did not trip when the device was properly wired, the Commission found that they did not infringe. On appeal, the Federal Circuit affirmed both the Commission’s claim construction and noninfringement findings.
Judge Newman concurred in the judgment that infringement was not shown with respect to either the ‘386 or ‘389 patents, but noted that while the court reached the same result, it did so by straying from the Commission’s correct infringement analysis.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1338-1369.pdf
Wes Achey is an Associate in the IP Group of Alston & Bird’s Atlanta office.
Infringement: Generally
General Protecht Group, Inc., et. al., v. International Trade Commission, et al., Nos. 09-1378, -1387, -1434 (Fed. Cir. (I.T.C.) Aug. 27, 2010). Opinion by Dyk, joined by Prost. Dissenting opinion by Newman.
The Federal Circuit reversed the determination of the United States International Trade Commission (“the Commission”), holding that substantial evidence did not exist to support the Commission’s infringement findings.
Pass & Seymour, Inc. (“Pass & Seymour”) filed a complaint in the International Trade Commission, alleging that General Protecht Group, Inc. (“GPG”), Wenzhou Trimone Science and Technology Electric Co., Ltd (“Trimone”), and Shanghai ELE Manufacturing Cop. (“ELE”) infringe U.S. Patent Nos. 7,283,340 (“the ‘340 patent”) and 5,594,398 (“the ‘398 patent”), among other patents. The asserted patents and the accused products at issue all relate to circuit interrupters for use with household electrical appliances. Such circuit interrupters are typically recognized by the characteristic “test” and “reset” buttons that are found on household electrical outlets.
More specifically, the ‘340 patent is directed to a ground fault circuit interrupter (“GFCI”) receptacle that “detects the wiring state of the device and inhibits operation if the device is miswired.” ELE and GPG asserted that their accused devices do not infringe the ‘340 patent because their devices do not have a “detection circuit,” as required by the asserted claims of the ‘340 patent, and that the Commission erred in adopting the administrative law judge’s (“ALJ”) finding of infringement. The Federal Circuit reversed the Commission’s finding of infringement, holding that the ALJ’s finding of infringement was based on expert testimony that the Federal Circuit did believe provided substantial evidence to support a finding of infringement.
Trimone argued that its accused devices do not infringe the ‘340 patent because its devices do not have “four sets of interrupting contacts,” as required by the asserted claims of the ‘340 patent, and that the Commission erred in adopting the ALJ’s finding of infringement. With respect to Trimone, the Federal Circuit likewise held that the ALJ erred in its construction, and that Trimone’s devices did not infringe the asserted claims.
The ‘398 patent is directed to a new mechanical architecture for a GFCI receptacle, with detailed descriptions of an improved contact system that can move between a circuit-making position and a circuit-breaking position. The asserted claims use means-plus-function language to define several elements. The Commission upheld the ALJ’s finding that GPG’s accused devices contain structural equivalents to the structure required by the ALJ’s construction of a certain means-plus-function claim limitation (“latching means”). GPG argued that the structure in its accused devices perform the function of the “latching means” in a substantially different way than the structure disclosed in the ‘398 patent. The Federal Circuit reversed the Commission’s finding of infringement, holding that there was not substantial evidence to support the Commission’s finding that GPG’s accused devices had an equivalent structure to the structure required by the means-plus-function elements of the asserted claims.
Judge Newman dissented, taking issue with the manner in which the court reversed the Commission’s findings. More specifically, Judge Newman criticized the court for not discussing the substantial evidence supporting the Commission’s findings, which were contained in what Judge Newman characterized as “32 pages present[ing] a full understanding of the technology, with rigorous discussion of the evidence and extensive analysis, findings, and conclusions.” Instead, according to Judge Newman, the court “now finds its own facts, applies theories that were not raised by any party, uses incorrect standards of review, and creates its own electrical technology contrary to the uniform and unchallenged expert testimony.” In addition, Judge Newman stated that the court provided no opportunity for the patentee or the Commission to respond to the court’s new arguments and adjudications.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1378-1387-1434.pdf
Wes Achey is an Associate in the IP Group of Alston & Bird’s Atlanta office.
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