In an interference proceeding regarding a chimeric genes for cell-surface antibody production, the BPAI the claims of both applications after finding that they both failed to provide an adequate written descriptions as required by 35 U.S.C. 112. Particularly the Board found that the written description must include a listing of the specific nucleotide sequence of claimed DNA.
On appeal, the CAFC reversed, finding that the per se rule requiring recitation in the specification of the nucleotide sequence of the claimed DNA to be incorrect when the sequence is already known in the field.
The Board’s rule that the nucleotide sequences of the chimeric genes must be fully presented, although the nucleotide sequences of the component DNA are known, is an inappropriate generalization. When the prior art includes the nucleotide information, precedent does not set a per se rule that the information must be determined afresh.
On remand, the CAFC asked the Board to further explore whether the applications include appropriate descriptions in light of what is known in the field.
Warner-Lambert v. Teva Pharmaceuticals (Fed. Cir. 2005).
In a dispute over Warner-Lambert’s control over its ACE inhibitor quinapril, the district court granted summary judgment of validity in Warner-Lambert’s favor. Teva appealed, arguing that the patent was not enabled.
On appeal, the CAFC reversed and remanded. Specifically, the appellate panel questioned the district court’s summary judgment opinion that lacked any analysis of the enablement issue:
At the outset, we find the issue of enablement difficult to review because the district court did not address it in its decision granting Warner-Lambert’s summary judgment motion. We have no way of knowing what the district court thought of Teva’s enablement defense or why the court did not address the issue in its decision. In short, we are being asked to review an incomplete record.
Based on the evidence presented by Teva and a lack of written justification for the district court judgment, the CAFC held that Teva should be given another opportunity to present its case.
Freedman Seating v. American Seating (Fed. Cir. 2005).
Freedman was awarded summary judgment of infringement based on an analysis under the doctrine of equivalents.
Freedman’s patent covers technology for stowable bus seats that allow room for a wheelchair. The claims include a limitation of a seat-base having a slidably mounted movable end. On appeal, American Seating argued that its rotatably mounted elements were not equivalent.
Agreeing with American, the CAFC reversed, holding that allowing DOE coverage of a rotatably mounted element would vitiate the claim language that required the element be slidably mounted.
[A]n element of an accused product or process is not, as a matter of law, equivalent to a limitation of the claimed invention if such a finding would entirely vitiate the limitation.
According to the panel, determining vitiation is done by considering “the totality of the circumstances in each case.” Specifically, the court must determine whether the alleged equivalent can be fairly characterized as an insubstantial change from the claimed subject matter without rendering the pertinent limitation meaningless.
In this case, the court determined that the “slidably mounted” limitation excluded the possibility of DOE coverage of a “rotatably mounted” element.
Reversed.
Comment:
DOE jurisprudence is becoming more confusing. Every defendant now has an arguable vitiation position — since, by definition, the DOE is only applied against products that do something different than what is required by the claims.
September 18–20, 2005: 42nd Annual Corporate Patent Seminar is being held in Chicago this year. The Seminar is intended as a forum for discussion between senior in-house patent professionals. I will be at the Seminar leading a session on controlling patent law information overload. File Attachment: CorpPatSeminar.pdf (26 KB)
Pharmacia v. Par Pharmaceuticals (Fed. Cir. 2005).
Inequitable conduct includes an intent to deceive coupled with either:
Affirmative misrepresentation of a material fact
Failure to disclose material information, or
Submission of false material information.
In this case, the CAFC affirmed a district court’s finding of inequitable conduct based on the patentee’s failure to submit certain prior art articles to the PTO along with the filing of a declaration that contradicted the articles. Intent was inferred by the materiality of the references and because one of the unsubmitted articles was co-authored by the declarant himself.
Regarding a second patent in suit that was joined to the first by a terminal disclaimer, the CAFC found that the inequitable conduct during prosecution of in the first patent did not extend to the second. Specifically, the appellate panel affirmed the conclusion that a terminal disclaimer alone does not bind two patents together for purposes of unenforceability due to inequitable conduct.
Antitrust: The U.S. Government has filed a brief in support of petitioner in the Illinois Tool Works case. The Government argues that the court “should not presume that a patent confers the market power necessary to establish that is unlawful per se.” File Attachment: Gov’t Brief (178 KB).
Patent Reform: An amendment has been proposed to the Patent Act of 2005 that would alter the law on venue for patent infringement. File Attachment: New Patent Act.doc (27 KB).
Trademark: Link – Professor Goldman (Marquette) discusses the recent follow-up opinion in Geico v. Googleholding that the use of a trademarked term in sidebar ads may create customer confusion in violation of the Lanham Act.
In-House: Todd Mayover has a new blog discussing patent law from the perspective of an in-house counsel. http://ipcounsel.blogspot.com/.
Hatch-Waxman: Philip Brooks points us to the Jeremy Burlow’s interesting paper on The Gaming of Pharmaceutical Patents [pdf].
Harris owns the patent on a signal decoder that uses an estimator to compensate for transmission interference. A jury found that Ericsson infringed the Harris patent. Ericsson appealed — arguing for JMOL based on faulty claim construction.
On appeal, Ericsson asked the CAFC to take a fresh look at claim construction — arguing that the Means-Plus-Function term “time domain processing means” had been improperly interpreted in light of a case (WMS Gaming) that was decided at the Federal Circuit after the claim construction. Harris, on the other hand, argued that Ericsson waived the WMS Gaming argument by failing to advance it at trial or object to the jury instructions.
Choice of law: The CAFC determined that waiver of a claim construction argument to be intimately associated with patent rights, and thus, that Federal Circuit law should apply to such questions.
Waiver Analysis: The CAFC found that it has “case-by-case discretion over whether to apply waiver” but that if Ericsson’s arguments on appeal was “the same concept” as that argued before the district court then there would be no waiver. Following Gaus v. Conair. Because the appellate panel found Ericsson’s claim construction argument on appeal to be only a “slight change” from that argued at the district court and thus that there was no waiver.
Dissent: In a dissenting opinion, Judge Gajarsa argued that Ericsson’s argument on appeal was a complete “paradigm shift” from what it argued at trial and that Ericsson had at least “ten opportunities . . . to make its [new] claim construction arguments.”
Now, on appeal, Ericsson awakens to the benefit of WMS Gaming and argues for the first time that it controls. . . . The verdict of a jury will not ordinarily be set aside for error not brought to the attention of the trial court.”
Concluding with a policy analysis, Judge Gajarsa finds that the majority holding “improperly encourages parties to take their chances on a high stakes, potentially cost saving argument at trial, while proliferating new arguments on appeal. For various reasons this court already has a high reversal rate on claim construction issues, which tends to encourage appeals and, perhaps, discourage trial courts from heavily investing in claim constructions below. The court’s holding will only intensify this problem, and further distort the proper trial-appellate relationship regarding claim construction.”
Ex parte Eggleston (B.P.A.I. 2005) (NOT PRECEDENT).
In an application involving a method of mobile communication, the examiner rejected the claims because the subject matter was not “described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time of the application was filed, had possession of the claimed invention.” Specifically, the examiner contended that an explicit limitation in the claims was not present in the written description.
The BPAI reversed the rejection, finding that the original disclosure provided adequate support.
We find that the original description, albeit in different language than is now claimed, would have conveyed to the artisan that the inventors had possession of the subject matter which they now claim at the time of filing the application.
In its decision, the Board affirmed the principle that an “explicit” disclosure of claim terms is not required under 35 U.S.C. § 112, first paragraph. “An invention claimed need not be described ipsis verbis in the specification in order to satisfy the disclosure requirements.
Marley Mouldings v. Mikron Industries (Fed. Cir. 2005).
At summary judgment, the district court (N.D.Ill.) found Marley’s patent invalid for indefiniteness. On appeal, the Court of Appeals for the Federal Circuit (CAFC) reversed, holding that the claims were not “insolubly ambiguous” and thus not indefinite under 35 U.S.C. 112.
Marley’s patent is directed to a method of forming a foam composite as a wood replacement. The claims specify the volume of various materials use to create the composite. The district court found the volume requirements to be indefinite because the specification did not include any means to calculate the percent volume — “a critical determination to discerning” infringement.
Mikron also argued that “measurement of components by weight, not by volume, is the standard practice in the field of polymer processing, and [thus,]that the patentee’s failure to conform to this practice is further support for the indefiniteness of the claims.”
The CAFC disagreed, finding that “non-conformity is not of itself indefiniteness.”
We conclude that the district court erred in law, in requiring that the specification describe the relationship between volume and weight of the wood filler used or usable in the process. When a claim “is not insolubly ambiguous, it is not invalid for indefiniteness.” (quoting Bancorp Servs, 359 F.3d 1367).
Remanded.
NOTES:
This case attempts to distinguish Honeywell v. ITC, 341 F.3d 1332, 1339-40 (Fed. Cir. 2003) (claim indefinite because yarn melting parameter included without stating which of four known methods of preparing and testing the yarn should be used).
The CAFC has affirmed a district court’s summary judgment of invalidity — finding that the claim term "aesthetically pleasing" to be indefinite under the second paragraph of 35 U.S.C. § 112.
Section 112 provides that the "specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention."
Generally, the court warns against applying the indefiniteness provision to invalidate a patent.
If the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds.
However, the Appellate Panel found that Datamize’s arguments "fail to persuade [the Court] that ‘aesthetically pleasing’ can be given any reasonable meaning.
Affirmed — “Aesthetically pleasing,” as used in the independent claim, fails to “particularly point out and distinctly claim the subject matter which the patentee regards as his invention.
In one of the first claim construction cases following the landmark Phillips v. AWH case, the CAFC has reversed a district court’s construction of the phrase "a format specified by the institution." In its decision, the panel cited Phillips for the proposition that the lower court had improperly given the term an overly broad customary meaning. Id. ("‘customary meaning’ refers to the ‘customary meaning in [the] art field’").
NOTE: This week I have been on vacation at our family ranch in Kansas and blogging through my TREO. Sorry for the typos.
Ericsson v. InterDigital v. Nokia (Fed. Cir. 2005).
Ericsson sued InterDigital for a declaratory judgment that InterDigital’s group of digital wireless telephone patents are invalid and/or unenforceable. After a decade of litigation, the parties settled in 2003 and agreed to maintain the litigation record under seal. In the meantime, Nokia entered into a license agreement with InterDigital as a "most favored licensee." Thus, Nokia’s payments are based on settlement amounts from the Ericsson case.
To protect its interests, but only after the Ericsson settlement, Nokia moved to intervene in the Ericsson case. The district court granted Nokia’s motion — holding that "the Court’s rulings potentially affects Nokia’s obligations under its agreement with InterDigital." InterDigital appealed.
Finding that intervention is not a matter unique to patent law, the CAFC applied Fifth Circuit law to determine whether the intervention was proper. Under Fifth Circuit precedent, the appellate panel found that since Nokia filed its motion after the case was already dismissed, "Nokia’s motion to intervene failed to satisfy the Fifth Circuit requirement that there be an existing suit in which to intervene."
After finding MercExchange’s patent infringed and not invalid, the district court declined to issue an injunction against eBay. In its decision, the district court found that MercExchange’s (i) willingness to license; (ii) failure to practice the patents itself; and (iii) comments to the media regarding its intent to enforce patent rights all weighed against any presumption that it would suffer irreparable harm without an injunction. 275 F.Supp. 2d 695 (E.D. Va. 2003).
On appeal, the Court of Appeals for the Federal Circuit reversed, finding that, absent exceptional circumstances, a district court should issue a permanent injunction after a finding of infringement.
Now, eBay has appealed to the Supreme Court by filing a petition for certiorari asking the court to hear its case. The petition briefly spells out the traditional four-factor injunctive relief test and argues that the four-factor test should apply to patent cases rather than the de facto per se test applied by the CAFC.
In the four-factor test, the court should consider (i) irreparable harm from not issuing an injunction; (ii) whether an adequate remedy exists in law (damages) (iii) whether the injunction would be in the public interest; and (iv) whether a balance of hardships would tip in the plaintiff’s favor.
eBay argues that the move away from injunction as a per se consequence of infringement does not raise the standard for obtaining injunctive relief — rather, it is a move back to the standard originally intended by Congress.
Interestingly, this question arises at the Supreme Court as a proposed statute that would modify the principles of patent injunctive relief is being considered in Congress.
Frazier v. Roessel Cine Photo Tech (Fed. Cir. 2005)
by Jessica Lunney
The CAFC (Judges Bryson, Linn, and Dyk) affirmed the district court’s finding of inequitable conduct but vacated and remanded the award of attorney’s fees.
In a patent infringement suit, the district court based its inequitable conduct finding on two references: (i) a video submitted to the PTO to overcome a rejection and (ii) an unsubmitted, clipped advertisement in the client’s patent file. Generally, the patent was directed towards a video camera lens, and the submitted video footage allegedly showed lens functionality. As it turns out, the video was not actually created with the claimed lens. The CAFC was unimpressed with the inventor’s assertion that the footage could have been filmed using his invention.
Materiality + Intent: Because the video allowed a traversal of the PTO’s multiple rejections, the court deemed the video footage to be material. Intent was implied from both the inventor’s repeated changing of his sworn testimony and the myriad misrepresentations he made to his business partner and his patent attorney.
The CAFC reversed the inequitable conduct finding inasmuch as it was based on the advertisement and therefore vacated the award of fees and remanded to the district court to determine whether the case was still exceptional. Bryson’s separate opinion supported the entirety of the district court’s holding.
NOTE: Jessica Lunney is a law clerk at MBHB and a law student at Emory. She will complete law school in June 2006.
The CAFC has released a new appellate opinion that modifies the court’s analysis of Section 271 of the Patent Act but leaves the decision against RIM largely intact.
In December 2004, the Federal Circuit released its original opinion that pushed against the territorial bounds of patent law. In that opinion, the CAFC found that U.S. patent law covers instances where infringing elements are located abroad — so long as the “control and beneficial use” of the infringing system is within U.S. territory. This legal finding meant that RIM’s BlackBerry business, which spanned across the U.S. and Canadian borders, could be found to infringe NTP’s patent. Soon thereafter, RIM filed a motion for rehearing and rehearing en banc as well as other legal pleadings at the CAFC, district court, and PTO.
Rather than taking up the question in an en banc hearing, the original three-member panel (Judges Michel, Schall, and LINN) granted the petition for rehearing and revised portions of the opinion that discussed Section 271 — and thus withdrawing the December 14 opinion.
The new 75 page opinion takes a fresh look at the extent that a patent must be practiced within the U.S. to fall within the guise of 271(a).
35 U.S.C. 271(a): . . . whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States . . . infringes the patent.
The major dispute revolved around the phrase “within the United States:”
The grammatical structure of the statute indicates that “within the United States” is a separate requirement from the infringing acts clause. Thus, it is unclear from the statutory language how the territoriality requirement limits direct infringement where the location of at least a part of the “patented invention” is not the same as the location of the infringing act. (opinion at 52).
In an affirmative step, the court decided that locating a component outside the U.S. does not necessarily preclude infringement under 271(a). However, the court found that the analysis will depend upon the type of infringing act (use, make, sell) and the type of claim (system, method, product).
USE of SYSTEM: The site of the use of a patent is “the place at which the system as a whole is put into service, i.e., the place where control of the system is exercised and beneficial use of the system obtained.”
USE of METHOD: Each step must be performed in the U.S. “We therefore hold that a process cannot be used ‘within’ the United States as required by section 271(a) unless each of the steps is performed within this country.”
OFFERS to SELL and SELLING: You likely cannot infringe a method claim through sale! “It is difficult to envision what property is transferred merely by one party performing the steps of a method claim in exchange for payment by another party. Moreover, performance of a method does not necessarily require anything that is capable of being transferred.” NOTE — The court did not explicitly rule on this issue. Rather they only implied what their ruling would be.
Referring to 271(f), the court found that supplying U.S. customers with products does not fall within the clause even if those customers plan to perform a method with the product that would be infringing if performed wholly within the U.S.
Settlement: In the wake of the December opinion, NTP & RIM reportedly reached a settlement that included $450 million for NTP. The original settlement announcement was based on a 1/2 page term-sheet reportedly signed by the parties. As would be expected, 50 square inches of paper turned out to create a whole new level of disagreement between the parties who have been working through court mediation to flesh out the agreement.
In early June, the settlement issue came to a head and the parties staked out their positions on paper. In a motion filed with the CAFC, RIM argues that the term-sheet was a settlement of the case, and, as such, the case is now moot. RIM asked the CAFC to stay its decision on the for rehearing and remand the case to the district court to decide whether there has been a settlement. On the other hand, NTP has argued that the term-sheet was not a settlement and that there was never a “meeting of the minds.”
Now that the CAFC has remanded, the settlement issue will likely be resolved by the district court. (assuming the CAFC’s decision is not appealed to the Supreme Court).
Reexamination: In a parallel action, the patents at issue in the case (owned by NTP) are undergoing reexamination at the USPTO. As occurs in almost all inter partes and director-ordered reexaminations, the patent office has issued a non-final rejection in each NTP case that it has examined. Although this first rejection is a good sign for RIM, a final decision in the reexam will not be any time soon. (i.e., years). NTP has the opportunity to file a response to the non-final rejection. The PTO may then issue a final rejection, at which point NTP may ask for reconsideration, appeal to the PTO’s internal board (BPAI), and then appeal to the federal courts (i.e., the courts that have already determined that the patents are valid).
The Court of Appeals for the Federal Circuit has announced a new mediation initiative set to begin October 3, 2005. The court established the program with an en banc ordeder issued on August 1. In addition, guidelines for th eprogram have also been issued.
Links:
Link: En banc order initiating the CAFC mediation program.
Warner-Lambert v. Teva Pharmaceuticals (Fed. Cir. 2005). 
Freedman Seating v. American Seating (Fed. Cir. 2005). 
Pharmacia v. Par Pharmaceuticals (Fed. Cir. 2005). 
Antitrust: The U.S. Government has filed a brief in support of petitioner in the 
Harris Corp. v. Ericsson (Fed. Cir. 2005). 
Ex parte Eggleston (B.P.A.I. 2005) (NOT PRECEDENT). 
Marley Mouldings v. Mikron Industries (Fed. Cir. 2005). 
eBay v. MercExchange (on petition for certiorari)