TiVo Inc. v. EchoStar Corp. (Fed. Cir. 2011) (en banc nonprecedential order) Download Tivo 2009-1374 5 10 11 adl order to aso_new Before Rader, Newman, Mayer, Lourie, Bryson, Gajarsa, Linn, Dyk, Prost, Moore, O'Malley, and Reyna
The saga of TiVo v. EchoStar plays on. Shortly after the Federal Circuit issued its en banc opinion on April 20, 2011, discussed here, TiVo and EchoStar reached a widely publicized settlement. On May 2, the parties informed the CAFC of the settlement and asked the court to dismiss the appeal.
The court, again ruling en banc, declined to do so as it would effectively nullify the en banc opinion. Drawing upon the law of the Seventh, Ninth, and Eleventh Circuits, the CAFC concluded that "[i]f we were to grant the parties’ motion, the judgment would be that the appeal is dismissed. Although the parties do not ask us to vacate our decision, at this stage, days before issuance of a mandate, we determine that granting the motion to dismiss, which would result in a modification or vacatur of our en banc judgment, is neither required nor a proper use of the judicial system." Slip Op. at 2.
Unless and until: In noting that the parties are free to request that the district court dismiss the complaint and vacate its previously imposed sanctions, the CAFC commented that the district court would lack jurisdiction to take this action "unless and until we return the case to its docket." Slip Op. at 3. Presumably the CAFC does not intend to modify its en banc opinion, but the court's choice of words leaves open that possibility.
Billups-Rothenberg, Inc. v. Associated Regional and University Pathologists, Inc. (Fed. Cir. 2011) Download 10-1401 Panel: Gajarsa (author), Linn, and Moore
Billups is a classic example of the difficulties companies face when engaging in patent races. Patent races occur when two or more entities are in competition to be the first to develop and patent a new technology. In these sitautions, companies race to file patent applications, hoping to gain a competitive advantage. Sometimes, however, the applications are filed before the inventors have really developed a patentable invention; othertimes, the applications are filed too late, after a competitor has filed its own application or published crucial information. In this case, Billups filed Patent No. 5,674,681 too early and Patent No. 6,355,425 too late, losing on both ends.
The patents-in-suit relate to a genetic test for Type I hereditary hemochromatosis that involves the detection of specific mutations in genes involved in regulating iron absorption. The district court granted summary judgment of no written description for the '681 patent and anticipation of the '425 patent.
Lack of Written Description of Earlier Patent On appeal, the CAFC first affirmed the district court's ruling that the '681 patent lacked written description, applying its customary approach to biotechnology inventions. Here, Billups disclosed only the approximate location of the relevant mutation in the '681 patent, a disclosure that it argued was sufficient to place the inventor in possession of the invention (which in this case included the step of detecting the mutation) when combined with the knowledge that existed at the time of invention. The CAFC disagreed. "Given the lack of knowledge of sequences for the hemochromatosis gene and its mutations in the field, the limited extent and content of the prior art, and the immaturity and unpredictability of the science when the '681 patent was filed, Billups cannot satisfy the written description requirement merely through references to later-acquired knowledge." Slip Op. at 11.
The panel also, unnecessarily in my opinion, addressed the problem in genus-disclosure terms. After quoting the relevant case law regarding disclosure of genus claims, the court concluded that the the patent failed because it "does not not identify even a single species that satisfies the claims. In this case, the eventual discovery of only one species…within the claimed genus does not constitute adquate written description of that genus." It is opaque to me what relevance a post-filing discovery of a species, let alone one by a third party, has to a species-genus analysis.
Anticipation of Later Patent At the same time that Billups was conducting its research, another group of scientists isolated and sequenced the hemochromatosis gene, published their results, and obtained Patent No. 6,025,130, filed nearly three years before the '425 patent. The CAFC agreed with the district court that the '130 patent was anticipatory.
The inquiry focused on whether the '130 patent disclosed the diagnosis of an iron disorder using a specific mutation, the S65C mutation. The '130 patent reports the genetic sequence of the S65C mutation, among with others that the inventors believed relevant to hemochromatosis, and describes techniques for conducting genetic assays that it states can be used to design a diagnostic device and method for screening the mutations. Billups argued that this disclosure was not anticipatory because the '130 patent did not conclude that the S65C mutation was related to a hemochromatosis disease state, merely that there was a correlation and thus, Billups argued, the S65C mutation may have been only a clinically insignificant polymorphism.
Relying on the doctrine that a "reference is no less anticipatory if, after disclosing the invention, the reference then disparages it" (Slip Op. at 15), the CAFC rejected BIllups argument. Here, "the '130 patent disclosed using the S65C mutation when diagnosing hemochromatosis, but qualifies that disclosure with the obseravation that the mutation "may only be a polymorphic variant." Id., quoting '130 patent (emphasis in opinion). Although the prior art questioned the utility of the application of the disclosed invention, it nevertheless disclosed it, thus rendering the '425 patent anticipated.
Rembrandt Data Technologies, LP v. AOL, LLC (Fed. Cir. 2011) Download 10-1002 Panel: Gajarsa (Linn), Linn, and Dyk
In 2008, Rembrandt sued Canon and Hewlett-Packard, among others, for infringement of Patent Nos. 5,251,236 and 5,311,578. Rembrandt contended that Canon and HP infringed by marketing office products containing modem chips capable of implementing International Telecommunications Union protocol V.32. The modem chipsets in the accused products are manufactured by a third party, Conexant.
At the trial court level, the district court granted summary judgment in favor of the defendants on the basis that because Conexant was a licensee of the '236 and '578 patent, Rembrandt's rights were exhausted and it could not recover from Canon and HP. The court further held that claims 3-11 of the '236 patent were invalid for indefiniteness as they improperly mixed method and apparatus elements and that claims 1-11 (all of the asserted claims) were invalid for indefiniteness for failing ot disclose algorithms corresponding to functions set out in the claims. Rembrandt appealed.
Patent Rights Exhausted Through Prior License The patents-in-suit were originally owned by AT&T, who granted a license to Rockwell International in the late 1980's. Under a 1995 side letter, AT&T also granted Rockwell the right to sublicense "to any future divested present business of Rockwell." That license was subsequently assigned to a reorganized Rockwell ("New Rockwell"), and then to Conexant as part of a spin-off of its modem business. The patents themselves changed hands several times through a series of divestitures and acquisitions until finally owned by Rembrandt.
On appeal, Rembrandt argued that patent exhaustion did not apply because Conextant was not a valid licensee under the terms of the agreements. Looking to the terms of the contact, the CAFC held that contrary to Rembrandt's argument, sublicensing did not require AT&T's consent as long as it occured as part of a divestiture of Rockwell's present business. Nor did the general rule that "the law does not recognize any right of a nonexclusive licensee to assign the license or to further sublicense" apply because the contract expressly allowed for such sublicenses to be granted.
The CAFC also applied a pro-licensee interpretation of the scope of the license. In connection with the sublicense provision, the 1995 Side Letter limited that right "only to the extent applicable to products and services sold by the future divested business prior to its divestiture." Rembrandt contended that this meant the specific models being sold by Rockwell in 1996, when it divested its semiconductor business to New Rockwell. The CAFC disagreed. Looking to the 1988 and 1995 agreements, the court noted that neither refers to specific models of modems, instead specifying product types in general, functional terms. Thus, because Old Rockwell sold modems prior to the transfer to New Rockwell, and because New Rockwell sold V.34 protocol-compliant modem chipsets prior to the divestiture to Conexant, the court concluded that the sublicensing conditions were satisfied.
Indefiniteness The CAFC also addressed three separate indefiniteness issues. The court first affirmed the district court's grant of summary judgment that claims 3-11 of the '236 patent were indefinite because they contained both apparatus and method claims. "[R]eciting both an apparatus and a method of using that apparatus renders a claim indefinite under section 112, paragraph 2." Slip Op. at 15, quoting IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). Rembrandt's only argument in response was to request that the court insert apparatus language into claim 3, from which claims 4-11 depended. Unsurprisingly, the court declined to do so. "[T]he correction suggested by Rembrandt is "not minor, obvious, free from reasonable debate or evident from the prosecution history.'" Slip Op. at 17 (quoting district court opinion).
Rembrandt fared somewhat better on claims 1 and 2. The district court invalidated these claims (as well as claims 3-11), construing them to contain several means-plus-function elements and holding them indefinite due to the patent's failure to disclose an algorithm able to perform the recited functions.
The CAFC disagreed that two of these elements were drafted in means-plus-function form. Although the elements contained the word "means," that created only a presumption that the limitation was drafted in means-plus-function format. "This presumption can be rebutted if the claim limitation itself recites sufficient structure to perform the claimed function in its entirety." Slip Op. at 19. That determination involves a 'one skilled in the art' analysis: "When determining whether a claim term recites sufficient structure, we examine whether it has an understood meaning in the art." Id.
Here, there was no dispute that two of the claim elements, "fractional rate encoding means" and "trellis rate encoding means" recited sufficient structure. Rembrandt's expert testified that these terms were used in publications and published patents in the early 1990's and were self-descriptive to one of ordinary skill in the art, testimony that went undisputed by the parties. Thus, these elements recited sufficient structure by themselves to overcome the presumption of treatment under § 112, ¶ 6.
The CAFC did recognize a dispute over two other terms, "buffer means" and "combining means." Here, the panel appears to have agreed with the district court's interpretation of these elements being in means-plus-function format. However, the panel could not agree that the specification failed to disclose algorithms for these elements. Remrandt's expert testified that the figures, text, and table in the '236 patent disclose complete algorithms to a person skilled in the art; Canon argued that they did not. Thus, the court reversed the district court's grant of summary judgment of invalidity of claims 1 and 2 of the '236 patent.
In Re Yasuhito Tanaka (Fed. Cir. 2011) Download 10-1262 Panel: Bryson, Linn (author), Dyk (dissent)
Patent No. 6,093,991 issued to Yasuhito Tanaka in 2000. Two years later, Tanaka filed a reissue application seeking to broaden the scope of independent claim 1. During the reissue proceeding, Tanaka gave up the broadening attempt, instead presenting unamended claims 1-7 and new claim 16 depending from claim 1.
The examiner rejected claims 1-7 and 16 on the ground that, because Tanaka's declaration did not specify an error that broadens or narrows the scope of the claims of the issued patent, there was no error correctable by reissue. A seven judge panel of the Board of Patent Appeals and Interferences affirmed the examiner's decision in a precedential opinion, concluding that 35 U.S.C. § 251 "disallow[s] reissue applications that simply add narrow claims to the reissue patent when no assertion of inoperativeness or invalidity for the reasons set forth in § 251 can be made by the patentee" and finding that Tanaka was impermissibly seeking an additional claim on reissue 'in order to hedge against the possible invalidity of one or more of the original claims.'" Slip Op. at 4 (quoting Board decision).
Majority: Addition of Narrower Claims is Permitted On appeal, Judges Linn and Bryson disagreed with the Board's holding. Drawing upon a rule articulated in dicta by Judge Rich in In re Handel, 312 F.2d 943, 946 n.2 (CCPA 1963), an implication of the rule in In re Muller, 417 F.2d 1387 (CCPA 1969), and an assumption of the rule in Hewlett-Packard Co. v. Bausch & Lomb, Inc., 822 F.2d 1556 (Fed. Cir. 1989), the majority held that longstanding precedent and the principles of stare decisis permit patent applicants to file a reissue application solely to add additional claims:
Even though the rule that adding a dependent claim as a hedge against possible invalidity is a proper reason to seek reissue has seemingly never been formally embodied in a holding of this court or its predecessor, articulation of the rule in Handel was not simply a passing observation—it was a considered explanation of the scope of the reissue authority of the PTO in the context of a detailed explanation of the reissue statute. Based on this court’s adoption of that rule and its adherence to the rule in both Muller and Hewlett-Packard, this court rejects the Board’s contrary ruling.
Judge Dyk's Dissent Rejecting the majority's shaky reliance on Handel, Muller, and Hewlett-Packard, Judge Dyk instead pointed to even older precedent – a nineteenth century Supreme Court decision – that, in his view, rendered reissue unavailable when nothing in the original patent was being corrected.
It is plausibly suggested that ‘the claim could be made perfect in form, and consistent with the description of all that portion of the apparatus which relates to the invention, by simply striking out the letter of designation for the upper chest, J, and the letter of designation for the conveyor shaft of that chest, K.’ But that the inventor did not and does not intend so to amend his claim is conclusively shown by his having repeated the same claim, including these very letters of designation, in the [retained] claim of the reissued patent. His attempt is, while he retains and asserts the original claim in all particulars, to add to it an-other claim which he did not make, or suggest the possibility of, in the original patent . . . .
To uphold such a claim . . . would be to disregard the principles governing reissued patents, stated upon great consideration by this court at the last term in the case of Miller v. [Bridgeport] Brass Co., 104 U.S. 350, and since affirmed in many other cases.
Dissent, quoting Gage v. Herring, 107 U.S. 640, 645 (1883) (emphasis added by Judge Dyk). In Judge Dyk's view, Gage thus foreclosed the ability of applicants to retain the original claims without alteration or amendment, or at a minimum created enough conflict with the cases cited by the majority that the court was free to address the issue on the merits.
Comment: As both the majority and dissent seem to implicitly recognize, neither is on particularly solid ground in terms of prior decisions. The majority relies on a rule that it itself admits is dicta, but nevertheless characterizes as the product of longstanding precedent. The dissent foundation's is even less stable, being built on vague language from an opinion that involved an earlier version of § 251. It is not at all clear from Gage that the Court was concerned with the mere addition of a new claim or instead with the addition of a broadening claim, although after reading Gage I think the majority has the more correct interpretation. In the end, though, the majority supports its opinion not just with citation to Handel, but also with reasoning sufficient enough to provide an independent basis for the ruling.
Guest Post by Megan M. La Belle, Catholic University Columbus School of Law
Professor La Belle attended the oral argument in Microsoft v. i4i Limited Partnership this morning and was kind enough to prepare this summary for Patently-O.
Today, the United States Supreme Court heard oral argument in Microsoft Corporation v. i4i Limited Partnership, in which Microsoft has challenged the Federal Circuit’s clear and convincing evidence standard for overcoming the presumption of patent validity set forth in 35 U.S.C. § 282. The argument was held before a full courtroom, with former Deputy Solicitor General Thomas G. Hungar representing Microsoft, former Solicitor General Seth P. Waxman representing i4i, and Deputy Solicitor General Malcolm Stuart arguing as amicus curiae on behalf of the United States in support of i4i.
Mr. Hungar began his argument by referring to the Court’s statement in KSR Int’l Co. v. Teleflex, Inc. that the presumption of validity “seems much diminished” where, as here, the prior art was not considered by the U.S. Patent & Trademark Office. Justice Scalia quickly responded, asking whether Microsoft was arguing that a preponderance of the evidence standard should apply across the board, or only when the prior art was not considered by the USPTO. Mr. Hungar explained that Microsoft’s position is that the more relaxed standard should apply in all cases where patent validity is challenged.
The Justices then asked a series of questions about the state of the law and congressional intent in 1952 when § 282 was enacted, since the statute itself is silent as to the evidentiary standard. The Court focused on Radio Corporation of America (RCA) v. Radio Eng’g Labs., Inc., 293 U.S. 1 (1934), in which Justice Cardozo made some broad statements about the presumption of patent validity, including that the challenger “bears a heavy burden of persuasion” and that the presumption cannot be overcome “except by clear and cogent evidence.” Relying on RCA, i4i argued that Congress intended to codify the existing presumption of patent validity when it enacted § 282, and therefore clear and convincing evidence is the correct standard. Microsoft countered that the law regarding the presumption of validity was “all over the map” in 1952, and that some courts did not recognize any presumption of validity, much less a presumption that could only be overcome by clear and convincing evidence. Microsoft further argued that the quoted language from RCA was mere dicta, and that the case was distinguishable because RCA involved a question of priority of invention, not validity.
In addition to arguing that Congress intended to codify the clear and convincing standard, counsel for both i4i and the United States emphasized Congress’s acquiescence in that standard over the years. They contended that Congress is well aware of the Federal Circuit’s clear and convincing standard, and that Congress has been very active in the patent arena both in the past and in the present. Yet, despite its many other proposals to reform the patent system, Congress has made no attempt to change the long-standing evidentiary standard for overcoming a presumption of validity.
Some Justices inquired about solutions other than altering the evidentiary standard. Justices Breyer and Sotomayor wondered if perhaps the issues raised by this case could be addressed with careful jury instructions. Justice Sotomayor suggested, for example, that a jury could be instructed that the burden of proof to overcome the presumption of validity is clear and convincing evidence, but that the challenger’s burden is more easily satisfied with respect to evidence of prior art that was not considered by the USPTO. Microsoft responded that such a jury instruction could be confusing for the jury, as the Federal Circuit held in an earlier case between Microsoft and z4 Technologies.
Finally, the Court returned to the question as to why the presumption of validity should apply when the prior art was not considered by the USPTO. In response to Justice Ginsburg’s request to justify such a rule, Mr. Waxman offered four reasons. First, a validity challenge is a “collateral attack” on a governmental decision to issue a patent. Second, if a patent is erroneously invalidated, the harm to the patent owner is significant because of the preclusive effect such a determination has under Blonder Tongue v. University of Illinois, 402 U.S. 313 (1971). Third, i4i argued that such a presumption is warranted because patent owners, investors, and licensees rely on patents once they are issued. Finally, i4i claimed that it is “far from black and white what the PTO does or doesn’t consider,” and that rejecting the long-standing clear and convincing standard would marginalize the agency. In response, Justice Breyer stated that i4i’s reasons “are all along the lines of how important patents are and what a disaster [it is when] patents are invalidated.” Justice Breyer then commented that, in today’s world, perhaps a “worse disaster for the country is to have protection given to things that don’t deserve it….”
The Court is expected to issue its decision before the end of June 2011. Chief Justice Roberts recused himself, so the case will be decided by the remaining eight justices.
Megan M. La Belle is an assistant professor at the Catholic University of America, Columbus School of Law, where she teaches and researches in the area of intellectual property law and procedure. Her article "Patent Litigation, Personal Jurisdiction, and the Public Good" recently appeared in the George Mason Law Review.
Tomorrow, Monday April 18th, the Supreme Court will hear oral arguments in Microsoft v. i4i, which presents the question whether proving invalidity requires clear and convincing evidence when the prior art on which the invaldity defense rests was not considered by the PTO. The full Question Presented can be found here and prior Patently-O posts on the subject are linked below.
Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corporation (Fed. Cir. 2011) Download 10-1020 Panel: Newman, Dyk (dissent), Whyte (author)
For the past decade, the Federal Circuit has struggled to reconcile the the written description rules announced in its biotechnology-related opinions with the patentability requirements for patents in other technological fields. Particularly challenging for the court are the implications of a strong written description doctrine for mechanical inventions, which historically were subject to little scrutiny under the broad approach to the written description requirement.
Crown Packaging presents the latest iteration of the court's thinking on this issue. Penned by the highly regarded Judge Ronald M. Whyte of the Northern District of California, the opinion firmly lays to rest one possible argument for challenging mechanical patents on written description ground and confirms that the Problem-Solution approach to analyzing written description issues applied in Revolution Eyewear is alive and well post-Ariad. Given the depth of its treatment of the issue, this is an opinion that should go into every attorney's toolbag for addressing non-biotech related written description issues.
The patents at issue in Crown disclose a beverage can end that reduces the amount of metal wasted during the process of seaming the can end to the can body. (Picture a can of soda. The can end is the top portion that one drinks from. The can body is the part that contains the beverage.) The patents (which share a specification) solve the problem of reducing metal waste in two ways: first, by changing the angle of the vertical portion of the inside wall from nearly perpendicular to significantly angled, and second, by reducing width of the reinforcing bead (the little channel that runs along the inside of the can lip that tends to fill up with soda). Because simply reducing the width of the reinforcing bead can present structural challenges and result in unsightly scuffing, the patent also discloses a particular type of chuck (the portion of the seaming machinery that sits inside the top of the can against which the lip is rolled) that does not drive deeply into the reinforcing bead.
Figure 2 illustrates the prior art; Figure 5 is an embodiment of the invention. In the prior art can end, the peripheral walls are nearly vertical and the chuck (element 17) fully enters the reinforcing bead (element 15); in the embodiment of the invention, the walls are closer to 45 degrees and the chuck (element 31) does not enter the reinforcing bead (element 25).
Crown's two patents, one for a product and the other a method of manufacturing, include claims covering just the use of an angled wall without mentioning the narrow bead or penetration of the chuck. During the district court proceedings, Ball argued that these claims lacked written description support because they covered embodiments both in which the chuck was driven inside the reinforcing channel as well as embodiments in which the chuck was driven outside the bead despite only describing embodiments showing the latter in the specification. The district court agreed with Bell, granting summary judgment of invalidity.
Judge Whyte and Judge Newman disagreed with the district court. After dismissing the species-genus approach to these types of situations, the majority framed the issue in problem-solution terms. Relying on Revolution Eyeware, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358 (Fed. Cir. 2009), the court agreed with Crown that "[i]nventors can frame their claims to address one problem or several, and the written description requirement will be satisfied as to each claim as long as the description conveys that the inventor was in possession of the invention recited in the claim." Slip Op. at 13, quoting Revolution Eyewear at 1367. Here, there were two separate, clearly described solutions to the problem of improving metal useage: modifying the slope of the wall or limiting the width of the reinforcing bead. Nor does it matter that both solutions relate to the same problem: "we specifically held in Revolution Eyewear that it is a 'false premise that if the problems addressed by the invention are related, then a claim addressing only one of the problems is invalid for lack of sufficient written description." Slip. Op. at 14, quoting Revolution Eyewear at 1367. And the majority distinguished the issue of enablement from that of written description, concluding that Ball's argument relating to whether one of ordinary skill in the art could not seam a can with an increased sloped chuck wall without also avoiding contact with the reinforcing bead presented an issue of enablement, not written description.
One possible limitation on the majority's holding, however, is where the specification mandates that the prior art problems must always be solved together. Here, the specification did not so require – rather, "the specification supports the asserted claims that achieve metal savings by varying the slope of the chuck wall alone." Slip Op. at 15. Yet this will likely be an argument raised by future parties.
The Dissent Although agreeing with the majority on the reversal of the district court's grant of summary judgment of anticipation, Judge Dyk disagreed with its treatment of the written description issue. Judge Dyk's dissent rested on a different reading of Revolution:
Relying on Revolution Eyewear, the majority holds that the claims are valid. However, Revolution Eyewear, in holding that a claim may address only one of the purposes disclosed in the specification, still requires explicit disclosure of the embodiments in the claims: “Inventors can frame their claims to address one problem or several, and the written description requirement will be satisfied as to each claim as long as the description conveys that the inventor was in possession of the invention recited in that claim.” Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1367 (Fed. Cir. 2009) (emphasis added). Therefore, the claims, whether directed to solving a single problem or multiple problems, must still be grounded in the specification.
Thus in Judge Dyk's view, the claims lack written description:
There is no question that the specification does not teach combining the sloped can end wall together with the wider, prior art bead and driving the chuck into the bead instead of the sloped can end wall. That combination is a new and distinct invention, and our written description jurisprudence requires that it be described in the specification. The fact that the claims are broad enough to cover such an invention or imply that the claims cover such an invention is not sufficient when the invention itself is not described either in the claims or elsewhere in the specification. The failure of the specification to describe the invention requires invalidation of claims 50 and 52.
Commentary: I find it difficult to agree with Judge Dyk's distinguishing of Revolution Eyewear, which was decided on strikingly similar facts, or his deeper view of what constitutes an invention. In Revolution, the patent addressed two problems presented by prior-art magnetic sunglasses that attached to the frame of a pair of glasses: a frame strength problem, which the inventor solved by placing the magnets on protrusions extending from the primary and auxiliary frames, and a stability problem, which the inventor solved by having the protrusions extending from the auxiliary frame rest on top of protrusions extending from the primary frame. The asserted claim covered only the former: placing the magnets on protrusions, and did not include any limitations directed to the stability problem.
In rejecting the written description defense, the Revolution court pointed specifically to Figure 3 of the original patent, reproduced below:
This figure discloses only the combination embodiment: a primary frame with magnet-containing protrusions designed so that the auxiliary frame protrusions will rest on top (element 13/14 on the primary, 21/22 on the auxiliary). The court's opinion did not rely on any embodiments showing only magnet-containing projections without the stability component. Yet, under Judge Dyk's reasoning, such an embodiment could not provide the necessary written description support.
Moving into the abstract, Judge Dyk's view of the nature of an invention also seems problematic to me. Judge Dyk seems to be expressing the Louriean idea that "the invention" must be limited to the identical embodiments disclosed in the patent. Any alteration of those embodiments, such as combining one particular inventive idea disclosed in the patent with the prior art, renders the claim invalid. But this bright line rule ignores one of the underlying tensions in patent law, namely, that it is impossible to describe every single possible permutation of the invention. Patents don't need to specify, for example, that a particular device may be painted every color of the rainbow to provide written description support for a claim that contains no limitations as to color. Yet this seems to be the logical extension of the embodiment-only approach, and one that continues to be trouble me.
In re violation of Rule 28(D) (Fed. Cir. 2011) (precedential order) Download 11-m976 order Panel: Dyk (author), Prost, and Moore
Patent litigations, by their nature, often invove commercially sensitive information. Unsurprisingly, parties are frequently reluctant to reveal the innermost workings of their manufacturing processes or valuable financial data. To preserve the confidentiality of this information, parties enter into agreed-upon protective orders that help ensure that their proprietary information is not disclosed outside the confines of the litigation.
The difficulty arises when it comes time for judicial resolution of the dispute. Although parties can readily agree to keep materials they exchange among themselves confidential, once that information must be presented in court or placed into a judicial opinion, it is much more difficult to prevent public access. In part this is due to practical realities (for example, although it is a possible approach, clearing a courtroom during a trial or hearing is a cumbersome process), but it is also due to the public's right of access to court proceedings, as recognized in Nixon v. Warner Commc'ns, Inc., 435 U.S. 589, 597-99 (1978).
The difficulty of maintaining the confidentiality of particular information becomes even greater when the lawsuit is on appeal. Federal Circuit Rule 28(d) does permit the use of confidentiality markings in briefs, but in general the Federal Circuit has demonstrated a dislike for the overuse of confidentiality designations, especially when it would interfere with the preparation and dissemination of its opinions.
The Federal Circuit's view on confidentiality designations is particular apparent in a recent precedential order imposing a monetary sanction on Sun Pharmaceutical Industries, Ltd. and Caraco Pharmaceutical Laboratires, Ltd. (collectively "Sun") for the extensive use of improper confidentiality markings. Sun was apparently so concerned about revealing the contents of a confidential license agreement and proposed consent judgment that it marked vast swaths of its brief as confidential, including essentially all of its legal argument.
Following oral argument, the CAFC issued an order instructing Sun to show cause why it should not be sanctioned for the violation of Rule 28(d). In response, Sun attempted to justify its use of extensive confidentiality designations, an approach that did not sway the court. Even leaving aside the question of whether the the agreements were properly designated, Sun's designations nevertheless fell far on the side of error.
Particular concerning to the court was Sun's designation of its legal arguments. This type of material is generally afforded little, if any, protection:
The marking as confidential of legal argument concerning the propriety of a decision by the court is generally inappropriate given the strong presumption of public access to court proceedings and records. Rule 26(c)(1)(G) is limited to commercial information that has competitive significance. The marking of legal argument as confidential under Rule 26(c)(1)(G) cannot be justified unless the argument discloses facts or figures of genuine competitive or commercial significance. That is certainly not the case here, and there is no claim that it is.
…
Further, much of the material marked as confidential does not even disclose the nature of the triggering event. For example, legal argument regarding the preclusive effect of consent judgments was marked as confidential in the briefs submitted by Sun. See Addendum at i–ii. One of the most blatant examples of improper confidentiality markings involves case citations and parentheticals describing the cited cases which are used to support the proposition that “parol evidence should have been examined to resolve the ambiguity and determine the intent of the parties.” See id. at iii–iv.
Slip Op. at 14. Due to the severity of the improper confidentiality designations, the CAFC imposed a sanction of $1,000 on counsel for Sun. Although perhaps a relatively small monetary sanction, the CAFC rarely imposes such a penalty, suggesting that the conduct in this case was particularly troubling to the court. For those interested in examples of improper confidentiality markings in Sun's brief, the court included an addendum containing relevant quotations.
On Monday, the Senate confirmed the nomination of Jimmie V. Reyna to the U.S. Court of Appeals for the Federal Circuit. Reyna's expertise in international trade will serve the Federal Circuit well, as the court's jurisdiction includes appeals from the Court of International Trade (CIT) and International Trade Commission (ITC). In addition to heading the international trade practice area at the Williams Mullen firm, Reyna has also published a slew of articles and two books on the subject. Reyna is an active member of the Hispanic legal community and will be the first Hispanic judge on the Federal Circuit.
In re Verizon Business Network Services Inc. (Fed. Cir. 2011) Download 10-m956 order Panel: Lourie, Gajarsa, and Linn (author)
The Federal Circuit continues to grant mandamus petitions relating to venue transfer where the basis for denying the request is tenuous. In Verizon, the defendants requested a transfer from the Eastern District of Texas to the Northern District of Texas, Dallas Division. Although several party witnesses resided within 100 miles of Dallas, and no witness resided within 100 miles of Marshall, the district court declined to transfer venue on the basis that several years earlier the court had handled a lawsuit involving the same patent and had construed 25 of the patent's terms.
Given that it was clear that trial in Dallas would be more convenient for the witnesses, the crux of the writ turned on whether the district court's familiarity with the patent was a plausible basis for denying transfer. The CAFC concluded it was not. Distinguishing its recent ruling in In Re Vistaprint Ltd., 628 F.3d 1342 (Fed. Cir. 2010), the panel held that "[t]o interpret § 1404(a) to hold that any prior suit involving the same patent can override a compelling showing of transfer would be inconsistent with the policies underlying § 1404(a)." Slip Op. at 6. The court continued:
In Vistaprint, we denied mandamus to overturn a denial of transfer and determined that the district court properly considered both its previous experience construing claims of the patent at issue and co-pending litigation before the district court involving the same patent and underlying technology. In this case, there is no assertion that there is an additional pending lawsuit in the Eastern District involving the patent and technology. Absent that, we deem the Eastern District's previous claim construction in a case that settled more than five years before the filing of this lawsuit to be too tenuous a reason to support denial of transfer.
Aventis Pharma S.A. v. Hospira (Fed. Cir. 2011) (precedential order) Download 11-10181047 order Panel: Prost, Mayer, and Moore (author)
The Federal Circuit has repeatedly warned about improper cross-appeals. Last week, the court issued a precedential order expressing its frustration with appellees who engage in this practice in violation of the court's clear rules, threatening sanctions should future parties continue to disregard its warning.
Aventis is in the process of appealing a judgment finding all of the asserted claims of the patents involved in its infringement suits against Apotex and Hospira invalid for obviousness and unenforceable due to inequitable conduct. In response, Apotex filed a cross-appeal to preserve its ability to challenge the district court's ruling that some of the asserted claims were not invalid on another ground, double-patenting, and to argue noninfringement. After Apotex declined to withdraw its cross appeal, Aventis filed a motion to dismiss.
The motions panel was unsympathetic to Apotex. "Our precedent consistently warns against the improper use of a cross-appeal to reach issues that do not otherwise expand the scope of the judgment. A cross-appeal may only be filed “when a party seeks to enlarge its own rights under the judgment or to lessen the rights of its adversary under the judgment.”" Slip Op. at 3 (quoting Bailey v. Dart Container Corp., 292 F.3d 1360, 1362 (Fed. Cir. 2002). Apotex's conduct was particularly egregious because it was exactly the type of cross-appeal that the court previously ruled improper in TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1157 (Fed. Cir. 2004). That rule, the CAFC noted, is clear. "Where [] the district court has entered a judgment of invalidity as to all of the asserted claims, there is no basis for a cross-appeal as to either (1) additional claims for invalidity or (2) claims of noninfringement." Slip Op. at 4, quoting TypeRight at 1157.
After concluding that Apotex's attempts to distinguish TypeRight were without merit, the court issued a strongly-worded warning about the practice of filing improper cross-appeals:
As Apotex points out, we have not sua sponte struck every improperly filed cross-appeal. This infrequent leniency is not an invitation to flaunt our practice and precedent, and the improper use of a cross-appeal directly contrary to our precedent may meet with sanctions. We understand Aventis plans to seek attorneys’ fees and costs incurred in connection with the motion to dismiss Apotex’s improper cross-appeal, and will evaluate its request in due course.
Slip Op. at 5.
Why do parties file cross appeals? Although parties may file improper cross appeals because they are legitimately concerned about waiving the ability to challenge a district court ruling, cross-appeals also give appellees procedural benefits. In a typical Federal Circuit appeal, the appellant is permitted to file a 14,000 word opening and a 7,000 word reply brief while the appellee may file one 14,000 word opposition brief. When a cross-appeal is involved, the appellee may file a 16,500 word opposition brief and a 7,000 word cross-appeal reply (the appellant is allotted 14,000 words for its reply). This give the appellee an extra 9,500 words – a precious commodity – along with the last word on the cross-appeal issues. But obtaining this advantage in contravention of the rules constitutes gaming the system – and as the court in Aventis noted, "this is neither fair to the appellant nor an efficient use of the appellate process." Slip Op. at 3.
Apotex likely got off lucky. If the court had waited until the briefing was complete, Apotex could have had its cross-appeal arguments disregarded altogether, even those it could have raised as alternate grounds for affirmance. As the court noted, however, Apotex will now be able to make those arguments in its appellees' brief if it so chooses. And should the court decline to grant Aventis's request for attorneys' fees and costs, its opinion may have little deterrant effect – unless the court steps up enforcement or imposes some noteworthy sanction for blatantly improper cross appeals, appellants may continue to flaunt its practice in order to gain the procedural advantage a cross-appeal offers.
American Piledriving Equipment, Inc. v. Geoquip, Inc. and American Piledriving Equipment, Inc. v. Bay Machinery Corporation (Fed. Cir. 2011) Download 10-1283 Panel: Bryson, Gajarsa, and Linn (author)
One of the Federal Circuit's primary purposes is to ensure consistent claim construction results. American Piledriving v. Geoquip highlights this role.
American Piledriving holds Patent No. 5,355,964, which relates to counterweights for "vibratory pile drivers." By rapidly rotating these unevenly weighted counterweights in opposite directions, vibratory forces are generated that force the pile into the ground. Early counterweights possessed several drawbacks that the invention of the '964 purport to solve.
The district court proceedings on appeal involved two suits brought by American Piledriving, one in the Eastern District of Virginia and the other in the Northern District of California, against distributors of vibratory pile drivers manufactured by Hydraulic Power Systems, Inc. (These two suits were part of a set of seven brought by American Piledriving, all in different districts). The crucial portion of representative claim 1 reads:
a counterweight rotatably carried in said receiving means for rotation about a rotational axis, said counterweight having a cylindrical gear portion and an eccentric weight portion integral with said cylindrical gear portion, said eccentric weight portion having at least one insert-receiving area formed therein, said counterweight being made of a first metal;
At issue were the district courts' constructions of three claim terms, two of which the courts construed differently: "eccentric weight portion" and "insert receiving area." (The courts reached the same contruction for "integral," a construction the appellate court affirmed). Based on their constructions of these terms, the two district courts granted summary judgment of noninfringement.
On appeal, the CAFC agreed fully with the Virgina court, affirming its constructions and grant of summary judgment. The Calfornia court fared slightly less well: the panel disagreed with the additional limitations the trial court added but nonetheless affirmed summary judgment of noninfringement for the two products that were also involving in the Virginia litigation, reversing and remanding for further proceedings on a third product at issue only in the California litigation.
Although much of American Piledriving comes across as a typical claim construction opinion concluding that well-established principles of claim construction supported the district courts' interpretations, the portions of American Piledriving addressing the two courts' different interpretations of "eccentric weight portion" and "insert receiving area" are somewhat noteworthy. All three courts determined that some structure provided by the specification was required; however, the CAFC concluded that the California court's constructions went beyond what the rules permitted:
While both district courts indicated that the term should be defined as extending from the face of the gear, the California court also required that the “eccentric weight portion” extend from a particular portion of the gear, extend in a specific direction, and include a receiving area formed to receive a tungsten rod. This court agrees with American Piledriving that nothing in the specification compels the reading of these additional limitations into the construction of “eccentric weight portion.”
Unfortunately, the CAFC's discussion of the differences between these two courts' analyses of the use of the structure in the specification to limit the functional claim elements is limited to this brief passage and a similar passage in its section on "insert receiving area." This is disappointing given the court's build-up at the beginning of the opinion, which held promise for a thorough dissection of where the cutoff might be in terms of how much structure from the specification should be part of the claim constuction. See Slip Op. at 10 ("In the course of construing the claims in this case, the Virginia district court carefully avoided redefining the claims and reading limitations into the claims from the written description. The California district court, however, inappropriately added several limitations not contained in the inventor’s claimed definition of the scope of his invention. This disparate treatment of the same issues before two competent and capable district courts is thus instructive."
Old Reliable Wholesale, Inc. v. Cornell Corporation (Fed. Cir. 2011) Download 10-1247 Panel: Newman, Mayer (author), and Bryson
For the second time this year the Federal Circuit has issued a precedential decision reversing an award of attorneys' fees entered against a patentee. Perhaps most noteworthy is the extent to which the judges on the court appear to be in agreement on the relevant standard and its application: although the panel compositions for Old Reliable and iLor v. Google do not overlap, the two opinions contain remarkably similar language and employ analogous analyses to reverse the exceptional case findings, suggesting a strong meeting of the minds on this issue.
Background In 2006, Old Reliable filed an infringement action against Cornell, contending that one of Cornell's insulated roofing products (VT-1) infringed Patent No. 5,069,950. Following depositions of the named inventor and Old Reliable's expert, the district court granted summary judgment of anticipation and obviousness based on based on a prior Cornell product (VT-2) and a third party product (the Air-Flo). The Federal Circuit affirmed the invalidity judgment in December 2009 via a Rule 36 summary disposition.
Meanwhile, Cornell had moved for an exceptional case determination and requested an award of its attorneys' fees. In February 2010, the district court granted Cornell's motion, although it limited its fee award to only the portion of the litigation following the September 2007 deposition of the named inventor, at which he admitted that the VT-2 "did the same thing as his invention." The district court concluded that Old Reliable's decision to continue the suit following this deposition was "improper and unjustified," warranting a finding of exceptional case. Old Reliable appealed.
Litigation Not "Objectively Baseless" On appeal, the Federal Circuit drew heavily on its recent pronouncements in iLor v. Google, focusing its scrutiny on the "objectively baseless" element of the meritless case inquiry. As in iLor, the CAFC began its analysis by looking to Brooks Furniture: "Absent misconduct in conduct of the litigation or in securing the patent, sanctions may be imposed against the patentee only if both (1) the litigation is brought in subjective bad faith, and (2) the litigation is objectively baseless.” Slip Op. at 8, quoting Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc., 393 F.3d 1378, 1381 (Fed. Cir. 2005). This second element, the court noted, involves a purely objective inquiry. "Unless an argument or claim asserted in the course of litigation is “so unreasonable that no reasonable litigant could believe it would succeed,” it cannot be deemed objectively baseless for purposes of awarding attorney fees under section 285." Slip Op. at 8, quoting iLor, 2011 U.S. App. LEXIS 516, at *12 (Fed. Cir. 2011).
The CAFC concluded that this "exacting standard" was not met in this case. The inventor's testimony failed to establish anticipation, which requires that all of the claim elements and their limitations be shown in a single prior art reference. Nor were Old Reliable's arguments distinguishing the VT-1 from the VT-2 "objectively meritless." "There was nothing frivolous or inherently implausible about Old Reliable’s [noninfringement assertion]." Slip. Op. at 12. Similarly non-frivolous was Old Reliable's argument that the third party product did not anticipate.
Effect of PTO Proceedings On June 15, 2010 – after the CAFC's affirmance of the invalidity finding – the PTO issued a notice of intent to issue an ex parte reexamination certificate confirming the patentability of the '950 patent over references including the VT-2 and Air-Flo. Although this notice was withdrawn shortly thereafter (citing the CAFC affirmance), the panel nonetheless took judicial notice of the reexamination certificate and concluded that "the fact that the PTO confirmed the validity of the ’950 patent on reexamination provides probative evidence on the issue of whether Old Reliable had a reasonable basis for its assertion that its patent was not anticipated." Slip. Op. at 19.
Comment: The court's emerging doctrine of exceptional case determinations envisions a threshold "objective" requirement that must be met, regardless of whether the underlying theory is one of willful infringement or meritless suit. In the context of willful infringement, the infringer must have acted "despite an objectively high likelihood that its actions constituted infringement of a valid patent;" in the context of an exceptional case determination the conduct must be "objectively baseless." Subjective considerations of bad faith play no role in this determination. An actor may have a completely wrongful intent, but if the conduct itself does not meet the objective threshold that intent just doesn't matter. Given the extraordinarily high hurdle required to satisfy the objective standard – "Unless an argument or claim asserted in the course of litigation is 'so unreasonable that no reasonable litigant could believe it would succeed,' it cannot be deemed objectively baseless for purposes of awarding attorney fees under section 285" (Slip Op. at 8 (emphasis added) – one would expect such findings to be rare indeed.
ABB Inc. v. Cooper Industries, LLC (Fed. Cir. 2011) Download 10-1227 Panel: Rader, Lourie, and Dyk (author)
In ABB v. Cooper, the CAFC addressed the previously unanswered question of whether federal subject matter jurisdiction exists over a declaratory judgment patent infringement action where the alleged infringer raises only a state law defense to infringement.
Four years prior to the litigation on appeal the parties had entered into a license agreement to settle a lawsuit in which Cooper asserted that ABB's manufacture of a vegetable oil based dielectric fluid, called BIOTEMP, infringed several of Cooper's patents. That license permitted ABB to make or "have made" its dielectric fluid; however, it did not include "the right of any third party to make BIOTEMP or any other fluid covered by the Cooper Patents." ABB also acknowledged in the agreement that each of the Cooper patents are valid and enforceable and that BIOTEMP is covered by one or more of their claims.
ABB subsequently outsourced the manufacture of BIOTEMP to Dow Chemicals, which it agreed to indemnify against claims of infringement by Cooper. In response, Cooper wrote to ABB and Dow to indicate that it viewed this as a material breach of the license agreement and would "act vigorously to protect its rights in that event." This led to ABB's filing of a declaratory judgment action in federal court in which it sought a declaration that its activities were authorized under the license agreement and, in an amended complaint, seeking declarations that it does not infringe the Cooper patents. The district judge concluded that ABB's complaint presents no federal question, and thus dismissed the case for lack of subject matter jurisdiction.
Comment: Although not completely clear, the opinion's treatment of the issue suggests that the noninfringement contention is based entirely on ABB's license defense.
No specific threat of infringement litigation required On appeal, the CAFC first rejected Cooper's argument that no actual controversy existed. After dismissing the view that there must be a specific threat of infringement litigation by the patentee as being an impermissible attempt to revive the "reasonable apprehension of imminent suit" test rejected by the Supreme Court in MedImmune, the CAFC concluded that the facts of this case were sufficiently similar to those of MedImmune and Micron Tech., v. Mosaid Techs., Inc., 518 F.3d 897 (Fed. Cir. 2008) to warrant the issuance of a declaratory judgment. Focusing on the warning letters, the court concluded that "under Micron and MedImmune, there was an immediate controversy surrounding infringement. ABB had an interest in determining whether it would incur liability for induced infringement, and it had an interest in determining whether it would be liable for indemnification, which turned on whether Dow would be liable for infringement." Slip Op. at 6-7.
Resolution of the state law defense issue left open by Textron The CAFC also resolved a jurisdictional question left open by the Supreme Court in Textron Lycoming Reciprocating Engine Div., AVCO Corp. v. Auto. Workers, 523 U.S. 653 (1998): "whether federal courts have jurisdiction over a declaratory judgment action where there is a federal cause of action but only a state law defense." Slip Op. at 9. While a longstanding rule holds that subject matter jurisdiction exists over declaratory judgment actions that are based on a claim of patent infringement, Cooper contended that it did not apply because the only defense raised by ABB in the district court was its state law license defense. Although discussed in Justice Breyer's concurrence, the Supreme Court explicitly left the issue open in Textron, and it remained unresolved by subsequent courts of appeals.
Addressing the issue as one of first impression, the CAFC reached the same conclusion as Justice Breyer:
[W]e conclude that federal question jurisdiction exists here. The general rule, articulated repeatedly by the Supreme Court, is that declaratory judgment jurisdiction exists where the defendant’s coercive action arises under federal law. See Franchise Tax Bd., 463 U.S. at 16, 19; Wycoff, 344 U.S. at 248; see also Speedco, 853 F.2d at 912. We see no reason to depart from that general principle where the defense is non-federal in nature.
Slip Op. at 11-12. In short, the subject matter inquiry for a declaratory judgment action focuses on the defendant's hypothetical well-pleaded Complaint, and thus the defenses raised by the declaratory judgment plaintiff are irrelevant to the inquiry:
According to Franchise Tax Board, then, federal jurisdiction in this type of case depends on the federal character of the hypothetical infringement suit and not the federal character of the invalidity defense. Indeed, “it now seems settled that [a party threatened with an infringement suit] can sue for a declaratory judgment of invalidity or noninfringement [because] the federal nature of the claims appears on the complaint . . . and the precise issue could have been litigated in federal court in a coercive action brought by [the patentee].” 10B Wright, Miller & Kane, Federal Practice and Procedure § 2767, at 650–51 (3d ed. 1998) (emphasis added)).
A few weeks ago a commenter asked about a list of Federal Circuit en banc patent law decisions. Despite the seeming importance of such a list, I was unable to find one through either online searching or consulting my favorite treatises. After sorting through several sources, however, I was able to assemble the following list. While a handful of the opinions are of limited substance, the bulk of the list consists of seminal patent rulings. Note that this is only a first pass, and any corrections are welcome.
Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010 (en banc)
Princo Corp. v. Int'l Trade Comm'n, 616 F.3d 1318 (Fed. Cir. 2010) (en banc)
Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc)
Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348 (Fed. Cir. 2009) (en banc in part)
Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009) (en banc in part)
Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009) (en banc)
In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc)
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc)
In re Seagate Tech., LLC, 497 F. 3d 1360 ( Fed. Cir. 2007) (en banc)
DSU Med. Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) (en banc in part)
SmithKline Beecham Corp. v. Apotex Corp., 453 F.3d 1346 (Fed. Cir. 2006) (en banc)
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc);
Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004) (en banc)
Honeywell Int'l Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131 (Fed. Cir. 2004) (en banc)
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 344 F.3d 1359 (Fed. Cir. 2003) (en banc)
Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046 (Fed. Cir. 2002) (en banc)
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558 (Fed. Cir. 2000) (en banc)
Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999) (en banc)
Nobelpharma Ab v. Implant Innovations, 141 F.3d 1059 (1998) (en banc in part)
Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc)
In re Zurko, 142 F.3d 1447 (Fed. Cir. 1998) (en banc)
Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 114 F.3d 1161 (Fed. Cir. 1997) (en banc)
Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512 (Fed. Cir. 1995) (en banc)
In re Trovato, 60 F.3d 807 (Fed. Cir. 1995) (en banc)
Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir. 1995) (en banc)
Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc)
In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (en banc)
In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994) (en banc)
A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc)
In re Dillon, 919 F.2d 688 (Fed. Cir. 1990) (en banc)
Beatrice Foods Co. v. New England Printing & Lithographing Co., 899 F.2d 1171 (Fed. Cir. 1990) (en banc)
Aerojet-Gen. Corp. v. Mach. Tool Works, Oerlikon-Buehrle Ltd., 895 F.2d 736 (Fed. Cir. 1990) (en banc)
Racing Strollers, Inc. v. TRI Indus., Inc., 878 F.2d 1418 (Fed. Cir. 1989) (en banc)
Gavin v. Star Brite Corp.,865 F.2d 269 (Fed. Cir. 1988) (en banc) (nonprecedential)
Kingsdown Med. Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867 (Fed. Cir. 1988) (en banc)
In re Roberts, 846 F.2d 1360 (Fed. Cir. 1988) (en banc)
Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931 (Fed. Cir. 1987) (en banc)
Woodard v. Sage Prods., Inc., 818 F.2d 841 (Fed. Cir. 1987) (en banc)
Wyden v. Comm'r of Patents & Trademarks, 807 F.2d 934 (Fed. Cir. 1986) (en banc)
SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107 (Fed. Cir. 1985) (en banc)
In re Bennett, 766 F.2d 524 (Fed. Cir. 1985) (en banc)
Paulik v. Rizkalla, 760 F.2d 1270 (Fed. Cir. 1985) (en banc)
In re Etter, 756 F.2d 852 (Fed. Cir. 1985) (en banc)
Atari, Inc. v. JS & A Group, Inc., 747 F.2d 1422 (Fed. Cir. 1984) (en banc)
Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984) (en banc)
South Corp. v. U.S., 690 F. 2d 1368 (Fed. Cir. 1982) (en banc)
Sources: Chisum on Patents; Lee Petherbridge, "Patent Law Uniformity," 22 Harv. J.L. & Tech. 421 (2009); WESTLAW. Those interested in further reading on en banc Federal Circuit decisions may want to check out Christopher Cotropia's article "Determining Uniformity Within the Federal Circuit By Measuring Dissent and En Banc Review," 43 Loy. L.A. L. Rev. 801 (2010).
Update: Shortly after publishing this post, I learned that Professor Ryan Vacca at the University of Akron School of Law has drafted an article on the Federal Circuit's en banc practice, which he recently presented at the Missouri Law Review Symposium. Professor Vacca argues that these practices make the court look much like that of an administrative agency engaging in substantive rulemaking, a role that he suggests is beneficial in shaping patent policy as a whole. Along with the substantive analysis, the article includes an appendix listing the court's en banc decisions. A draft of the piece, entitled "Acting Like an Administrative Agency: The Federal Circuit En Banc" is available on ssrn, and I recommend that anyone interested in the CAFC's en banc practices should take a look at it.
Cancer Research Technology Ltd. v. Barr Laboratories, Inc. (Fed. Cir. 2011) (Precedential Order) Download 10-1204 enbanc order
This morning the CAFC denied Barr Laboratories' request for rehearing en banc. Review was barely denied: the judges split 5-5, just short of the 6-judge majority currently required for rehearing en banc. Dissenting from the denial, both Judges Prost and Dyk expressed opinions on the issue of prosecution laches.
I previously wrote about Cancer Research Technologyhere. In a nutshell, the panel majority reversed the district court's finding of prosecution laches on the ground that no prejudice was shown due to the lack of any evidence of intervening rights arising during the prosecution period. Judge Prost dissented from that ruling, rejecting the idea that prosecution laches requires either prejudice or intervening rights.
Judge Prost's dissent from the denial of rehearing en banc, joined by Judges Gajarsa, Moore, and O'Malley, reiterates and bolsters that view. Drawing on Supreme Court precedent, Judge Prost again argues that the Supreme Court's test for prosecution laches does not require evidence of intervening rights:
This narrowing of the doctrine is not only unnecessary, it is contrary to Supreme Court precedent. It is true that in both Woodbridge and Webster the Court refused to enforce the patent where both unreasonable delay and intervening rights existed. Woodbridge, 263 U.S. at 53, 56-57; Webster, 264 U.S. at 465-66. In each of these cases, however, the Court made clear that both unreasonable delay and intervening rights were not required to support a finding of prosecution laches.
Prost dissent at 3-4. In Judge Prost's view, this precedent instead requires the court to favor flexibility over rigidity as the Supreme Court instructed in decisions such as Bilski, KSR, and eBay.
Judge Dyk wrote separately, commenting that while he agrees with Judge Prost that evidence of intervening rights should not be required, he disagrees with the use of a "totality of the circumstances" test, "which is really no test at all." Dyk dissent at 1.
Is Woodridge Applicable? In his IP newsletter, Hal Wegner takes issue with Judge Prost's characterization of a Supreme Court "doctrine" of prosecution laches based on Woodridge, pointing out that the case had nothing to do with a granted patent. As explained in an amicus brief filed in Symbol Technologies:
Woodbridge v. United States, 263 U.S. 50 (1923), does not provide any guidance regarding prosecution laches because Woodbridge never received a patent. Rather, the Woodbridge case involved a statutory compensation act for private relief for an unpatented invention of Woodbridge. Woodbridge, 263 U.S. at 51. The statute's language required the trial court to deny relief to Woodbridge because there had been laches in his patent procurement process. Id. This statutory laches in a private law therefore had nothing to do with laches in the patent law.
In contrast, Webster Elec. Co. v. Splitdorf Elec. Co., 264 U.S. 463 (1924), did include a discussion of prosecution laches. An examination of the facts in that case, however, reveals that the key issue involved what today would be inequitable conduct. Accordingly, Webster hardly shapes the contours for a well-formed ‘doctrine.’”
Hal Wegner, quoting Symbol Technologies, Inc. v. Lemelson Medical, Educ. & Research Foundation, 422 F.3d 1378 (Fed. Cir. 2005), Brief Amicus Curiae of Takeda Pharmaceutical Co., 2004 Westlaw 3335267, p. 4 (2004)(original emphasis).
By Oskar Liivak Assistant Professor, Cornell Law School
As Jason Rantanen’s post describes, Centocor claimed but failed to disclose any fully humanized antibodies. Abbott consistently pushed this argument and they won. It was the simplest and most direct way to dispose of the case. This approach necessarily left other important issues undecided, however. Both Eli Lilly and I separately filed amicus briefs in favor of Abbott and we both argued for a decidedly more aggressive, alternative argument for written description invalidity. As the Court in Centocor disposed of this case by simpler means, clear judicial resolution of our arguments will have to wait for another day.
This post highlights those remaining issues, why we should still care about them, and how they are tied to a much larger ongoing struggle in patent law – can a patent claim cover more than what was actually invented (i.e. conceived and disclosed) by the inventor? I think the answer is clear – it cannot – but not every patent attorney or CAFC judge agrees. I think this is perhaps the most important ongoing debate in patent law. § 112 as applied to antibodies is but one battlefront in this larger fight.
ABANDONING THE ANTIBODY EXCEPTION The arguments in both of our briefs would have resolved the case in favor of Abbott but would have also resolved a very problematic ambiguity relating to the written description for antibodies generally – the so-called ‘antibody exception.’ The PTO’s written description guidelines seem to suggest that disclosure of an antigen alone can provide § 112 support for any antibody that binds to that antigen. See U.S.P.T.O., Written Description Training Materials Revision 1 March 25, 2008 at 45-46. Cases like Noelle v. Lederman, 355 F.3d 1343 (Fed. Cir. 2004), have cited these guidelines but the guidelines have yet to be really at the center of a case – even here in Centocor the CAFC distinguishes them. The trouble is that those PTO guidelines are in tension if not complete conflict with written description as described in Ariad v. Eli Lilly, 598 F.3d 1336, 1354 (Fed. Cir. 2010) (en banc). With the rapid growth of and enormous revenues associated with antibody related therapies, patent law must clarify this issue.
The crux of the argument is simple. I believe that the disclosure requirements of § 112 limit claims to the subject matter actually invented by the inventor and disclosed by the specification. Ariad at 1351. If we consistently applied this rule for disclosure in light of today’s understanding of protein structure, disclosure of a well characterized antigen alone would not provide support for an antibody that binds to that antigen. And disclosure of one actual antibody provides § 112 support only for that antibody—not the entire genus of antibodies that binds to the antigen. This view is in direct conflict with the antibody exception. Here is the argument.
Ariad reaffirmed that § 112 “requires … that the specification must … show that the inventor actually invented the invention claimed.” Id. As best I can surmise, to invent something a person must conceive it. Conception is how patent law decides when something is invented; conception is how patent law decides who invents something; and it should be the way patent law determines what the something is that was invented. From the perspective of conception (namely a “definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice”) the antibody exception and the broad claims it would allow start to look totally absurd.
The problem is, as put by Eli Lilly in their amicus brief, “[e]ven with today's most advanced scientific tools, it is impossible to predict the actual structure … of a not-yet-known antibody based on the structure of an antigen or even the structure of another antibody that binds that same antigen.” Though my own scientific background was not in immunology (it was in the more general field of three dimensional protein structure determination) I agree with Eli Lilly. Even given the three dimensional structure of an antigen, no person today can conceive (without actually going into the lab and making one) an antibody that will bind to that antigen. Furthermore, even once we make one antibody that does bind to an antigen, that alone does not allow for the conception of any other antibodies (much less every antibody) that will also bind to that antigen.
As the Federal Circuit determined, Centocor’s “application only provides amino acid sequence information … for a single mouse variable region.” Slip Op. at 14. That meager though still useful (seehttp://en.wikipedia.org/wiki/Infliximab) disclosure pales in comparison to the broad genus of variable regions that were claimed. Asserted claims 2 and 3 covered any antibody with a human constant region and a human variable region that binds and neutralizes TNFα in a similar location as the deposited antibody. There is nothing in the specification that evidences conception of any other variable regions beyond the one deposited variable region. That disparity between the solutions disclosed versus the solutions claimed is why I viewed this case as being nearly identical to the over-reaching patentees in The Incandescent Lamp case, 159 U.S. 465 (1895). Where a solution to a technical problem is found through trial and error (even sophisticated, elegant trial and error like for antibodies) without further discovering how to extrapolate to other solutions from the one found solution, then claims cannot exceed that one particular solution. See id. at 472. As a result I argued that the asserted claims are invalid under § 112 because they claim variable regions (whether humanized or not) that Centocor certainly did not invent or disclose.
From a policy perspective some might worry that this will provide incredibly narrow and worthless claims in a rapidly growing and important field. I am not so sure. It will certainly allow others to produce their own antibodies to the same antigen as the other antibodies will likely differ in actual variable region structure. The narrow claims still prevent outright piracy and copying of your particular antibody but they also leave room for competition. With tens of thousands of dollars a year for treatment for these drugs, a little fair competition doesn’t sound bad. Lastly, the big question is the ability for generic biologic producers to piggy back on the testing data for the initial biologic. I don’t see a problem from narrow claim scope in this regard either. Though it depends on the details of the generic approval process for biologics, roughly speaking I wouldn’t want safety and efficacy data from one antibody to be used to confirm the safety and efficacy of structurally different antibodies even if they bind to the same antigen.
When § 112 and its usage of ‘the invention’ is rightfully tied to the subject matter actually invented (i.e. conceived and disclosed), then the shortcomings of the antibody exception become quite apparent. In fact, when viewed in that light (which I think is the only way to interpret the statute) I cannot fathom a scenario by which the PTO could have possibly drafted the antibody related written description guidelines that have led to the antibody exception.
THE INVENTION AS THE EMBODIMENTS CONCEIVED AND DISCLOSED But therein lies the problem: not everyone in patent law thinks about the statutory appearances of the invention in § 102, § 112, and more importantly § 271, as tied to the subject matter actually invented (i.e. conceived and disclosed). For some the invention is just a short-hand reference for whatever subject matter the applicant claims because “the claims … define the invention….” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). The difference between these two views is critically important yet patent law has never confronted this confusion directly. In fact, ask yourself, how do you conceptually and practically define the ‘invention’ in 35 U.S.C.? I think some of our most pressing debates are fueled by talking past each other. We are often thinking differently about the invention without actually being aware of the disagreement.
The fight over the disclosure requirements evidenced in Ariad and Centocor is just one visible battle between these two world views. Another important flashpoint is claim interpretation. Just a month ago on Jan. 24 (as noted here on Patently-O) in IP Frontline, Hal Wegner described the ongoing problems with claim interpretation. Discussing Arlington Indus. v. Bridgeport Fittings he pointed to the “festering sore” in Federal Circuit jurisprudence over the proper conceptual relationship between the claims and the specification. He noted that “[u]ntil there is a final resolution of this debate there will never be clarity in claim construction at the Federal Circuit.” That festering sore is another important instance of this broader fight over the proper conceptual relationship between claims, the invention, and the specification. In a recent article, I further detail this controversy and its proper resolution. For those interested in that broader discussion see Oskar Liivak, Rescuing the Invention from the Cult of the Claim (http://ssrn.com/abstract=1769270).
I thank Kevin E. Collins and Jason Rantanen for very helpful and insightful comments.
Centocor Ortho Biotech, Inc. v. Abbott Laboratories (Fed. Cir. 2011) Download 10-1144 Panel: Bryson, Clevenger, Prost (author)
Centocor, the holder of Patent No. 7,070,775, which claims fully human antibodies to human necrosis factor α ("TNF-α"), sued Abbott for infringement by the therapeutic antibody Humira®. A jury rejected Abbott's defenses and awarded Centocor $1.67 billion in damages. After the district court granted Abbott's JMOL of no willful infringement, but denied JMOL on invalidity, noninfringement and damages, Abbott appealed.
Later Added Claims Lacked Written Description On appeal, the CAFC reversed, focusing solely on the issue of written description. In many ways this is a prototypical written description case. Centocor's approach to developing a TNF-α antibody involved first identifying a mouse antibody to human TNF-α, then changing the less critical portions of the antibody to make it more human – thus producing a chimeric antibody. Abbott followed a different path, setting out from the start to develop a fully human antibody, a process that ultimately led to Humira®. Both Centocor and Abbott obtained patents on their antibodies.
In 2002, after Abbott obtained regulatory approval to market Humira®, Centocor filed claims to fully human antibodies as part of an ongoing continuation of the chimeric antibody patent family. These claims later issued as part of the '775 patent. In responding to Abbott's argument that the fully human antibody claims lacked adequate written description, Centocor relied on a 1994 CIP in the chain that predated the 1996 filing date of Abbott's patent application.
In its opinion, the CAFC honed in on the lack of disclosure of any human variable regions (the portion of the antibody that binds to TNF-α) in the 1994 CIP. Examining the "four corners" of the 1994 CIP application, the court concluded that "[t]here is nothing in the specification that conveys to one of skillin the art that Centocor possessed fully-human antibodies or human variable regions that fall within the boundaries of the asserted claims."
"while the patent broadly claims a class of antibodies that contain human variable regions, the specification does not describe a single antibody that satisfies the claim limitations. See Eli Lilly, 119 F.3d at 1566-69. It does not disclose any relevant identifying characteristics for such fully-human antibodies or even a single human variable region. See id. Nor does it disclose any relationship between the human TNF-α protein, the known mouse variable region that satisfies the critical claim limitations, and potential human variable regions that will satisfy the claim limitations."
Slip Op. at 16-17. Essentially, the claims constituted a wish list of properties for a fully-human, therapeutic TNF-α antibody would possess – but a mere wish or plan for obtaining the invention is not sufficient to satisfy the written description requirement.
Disclosure of a Protein Does Not Necessarily Suffice to Support Claims to All Associated Antibodies Centocor also suggested that it satisfied the written description requirement by fully disclosing the human TNF-α protein. It based that suggestion on the current PTO written description guidelines, together with Noelle v. Lederman, 355 F.3d 1343 (Fed. Cir. 2004). One example in the PTO guidelines indicates that "'an isolated antibody capable of bding to [protein] X' is adequately described where the specification fully characterizes protein X-even if there are no working or detailed prophetic examples of actual antibodies that bind to protein X." Slip Op. at 17-18. In other words, simply disclosing the "lock" is suffient to support a claim to the key fitting into that lock. This view was reinforced by Noelle, in which the CAFC held that:
"as long as an applicant has disclosed a “ fully characterized antigen,” either by its structure, formula, chemical name, or physical properties, or by depositing the protein in a public depository, the applicant can then claim an antibody by its binding affinity to that described antigen."
Noelle, 355 F.3d at 1349.
Accepting that while this may be true in some cases, the CAFC rejected its application to the multi-part claims at issue. "While our precedent suggests that written description for certain antibody claims can be satisfied by disclosing a well-characterized antigen, that reasoning applies to disclosure of newly characterized antigens where creation of the claimed antibodies is routine." Slip Op. at 19. Here, the creation of the claimed antibodies – which possessed a number of characteristics beyond their relationship with the antigen – was anything but routine. "Claiming antibodies with specific properties, e.g., an antibody that binds to human TNF-α with A2 specificity, can result in a claim that does not meet written description even if the human TNF-α protein is disclosed because antibodies with those properties have not been adequately described." Id. at 20. As Centocor "failed to support its contention that generating fully-human antibodies with he claimed properties would be straightforward for a person of ordianry skill in the art" at the time, possession of the known antigen did not place it in possession of the claimed antibodies.
For those who are interested in reading further, PatentDocs has a detailed write-up of the decision.
Last week I posted data about the CAFC's use of Rule 36 summary orders for the past several years, and suggested that there appears to be a notable uptick in the court's use of Rule 36 for patent infringement appeals this year. Several folks commented that because there are frequently fewer judges sitting during the summer months, it may be possible that most Rule 36 dispositions occur during the early months of the financial year. As a result, the linear projection I used for 2011 overpredicted the number of Rule 36 dispositions for the year.
To examine this suggestion, I conducted the same search as before, but limited the time range to the identical period as for 2011: October 1 – February 14. Fully expecting that the suggestion was correct, I was surprised by the results. Over the 12 years that I had examined the number of hits were almost exactly what would be expected from a linear prediction: 516 predicted vs. 513 actual. Looking at the last five years produced essentially the same result: 247 predicted vs. 236 actual, a ratio of 1.05 predicted : actual. Applying this value, along with a more appropriate multiplier than I originally used (12/5 as opposed to 24/9, since virtually all Rule 36 orders will come in the first half of the month), still produces a prediction of 89 Rule 36 dispositions this year – far exceeding the previous highest total of 64 (2007).
Below is a chart showing the number of Rule 36 dispositions during only the first four and a half months of the financial year.
A word of caution: Any estimates of total Rule 36 dispositions for the year are still highly speculative, and I would avoid reading too much into this data. Nor do I think it wise to try to ferret out reasons for the apparent spike in Rule 36 dispositions at this point – it's just far too early. Still, the data does suggest that it might be a good idea to keep an eye on the court's use of Rule 36 dispositions, and it would be an interesting subject to examine if a long term trend does become apparent.
Tomorrow, February 23rd, the Supreme Court will hear arguments in Global-Tech v. SEB, a case with broad implications for the doctrine of inducement of patent infringement. Previous Patently-O postings on the subject, including summaries of several of the briefs, are provided below. Unsurprisingly, there are a wide range of opinions as to the proper standard, with positions ranging from strict liability on the question of infringement to recklessness to requiring knowledge or purpose to infringe a patent.
An Objective View of Fault in Patent Infringement (Expressing my view that the appropriate standard for fault in the context of inducement is neither knowledge/purpose nor strict liability, but objective recklessness)
