In a patent infringement suit over electropneumatic paintball guns, an inventorship controversy arose. Smart Parts contends it is the sole owner of U.S. Patent No. 6,474,326. Dr. Edward Hensel, a former investor, claims to be a co-inventor. Hensel, now acting on behalf of WDP, provided evidence that he designed various elements of the patented invention – namely the electrical timing circuit and bolt action control. In addition, Hensel created a working model in his home. The court agreed that Hensel should be at least a co-inventor and granted summary judgment to WDP on the issue of inventorship.
Dana Corp. v. American Axle (Fed. Cir. 2004) (not citable as precedent).
In a patent infringement suit, the district court granted summary judgment of non-infringement to the defendant, holding that no reasonable jury could find that the defendant’s driveshaft technology infringed plaintiff’s patents.
The Federal Circuit vacated, finding that the district court incorrectly ignored the claim phrase “substantially uniform wall thickness.” According to the Appellate Panel, the term substantially allows for variation in wall thickness.
Ex parte FALSAFI (BOARD OF PATENT APPEALS AND INTERFERENCES) (2004) (Unpublished)
During prosecution of their patent application for a new dental cement composition, the applicants added the term “about” to modify an upper concentration range. The Examiner rejected addition of “about,” arguing that the broadened claims were not enabled.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. Extending the claimed range beyond the range described in the specification is not enabling and is new matter.
On appeal, the BPAI overturned the Examiner’s rejection, holding that the Examiner had not “met the required burden of proof for a rejection based on lack of enablement.”
The claims are directed to a dental composition and nothing in the specification indicates that minor differences in concentration render the composition unsuitable. The Examiner simply has provided no basis for the conclusion that one of ordinary skill in the art would not have been able to make the dental compositions at the slightly higher levels of the claims, if, indeed, the upper levels are outside the ranges discussed in the specification.
Lifestream Diagnostics v. Polymer Technologies (Fed. Cir. 2004) (unpublished opinion).
Lifestream sued Polymer Tech for alleged infringement of its patent on HDL cholesterol testing equipment. (U.S. Patent No. 5,135,716). After conducting a Markman hearing, the district court awarded a judgment of noninfringement to Polymer Tech.
On appeal, the Federal Circuit reversed in part.
We hold that reliance by the Patent Office upon arguments mae by the patentee during prosecution is not necessary to find argument-based estoppel…. Because we reverse some of the district court’s claim construction, we vacate the court’s judgment of noninfringement and remand.
Today’s Chicago Tribune (subscription) has a nice article on the Eolas case by reporter Barbara Rose. Most interestingly, her reporting does not fall in line with the trendy headlines like “Microsoft Wins Again,” “Two Strikes for Eolas,” and “USPTO Close to Rejecting Plug-in Patent.” Rose correctly notes that the Examiner accepted Eolas arguments that prior art submitted by WC3 did not invalidate the patent at issue.
Doyle’s attorney, Martin Lueck, said Eolas and the University of California are “very pleased” that the examiner accepted their arguments.
The examiner wrote that Eolas’ rebuttal to his office’s previous rejection of the patent’s claims “has been fully considered and is deemed persuasive.”
Eolas is not out of the water — the Patent Examiner was able to discover three more references and argue that the combination of those references rendered the Eolas patent obvious. Eolas must now respond to this new rejection. I was quoted in the article as saying that Eolas is in a “fairly good position.”
Acushnet, the maker of Cobra golf clubs and Titleist balls has requested an inter partes reexamination of Taylor Made Golf Company’s patent no. 6,623,378. In the proceedings, Acushnet will argue that Taylor Made’s golf club patent should be held invalid over prior art.
Starting Industrial has also requested an inter partes reexamination of Kioritz Corporation’s patented rope recoil starter for an internal combustion engine (U.S. Patent No. 6,588,390).
Bigio’s patent application claims a hair bursh with an “hourglass configuration for both the bristle substrate and the overall bristle array.” (Patent Application Serial No. 09/451,747). After receiving obviousness rejections from the Examiner and the BPAI, Bigio pursued his claims at the Federal Circuit. Some of the cited references were designed for use on animals rather than human hair, and Bigio argued that they should not apply because non-human hair brushes where excluded from the patent scope by language in the specification.
[T]he Board rejected Bigio’s interpretation of “hair brush” as limited to brushes only for scalp hair. Instead, the Board broadly construed “hair brush” to encompass “not only brushes that may be used for human hair on [a] scalp, but also brushes that may be used for hairs [o]n other parts of animal bodies (e.g. human facial hair, human eyebrow hair, or pet hair).”
On appeal, the Appellate Panel (RADER, J.) affirmed, finding that the Board correctly declined to import limitations on terms from the specification. Next, the Panel found that a toothbrush was an analogous art — and thus could form a basis of an obviousness rejection.
[I]t is necessary to consider ‘the reality of the circumstances’ – in other words, common sense – in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) []. Accordingly, the examiner and the Board must consider the “circumstances” of the application – the full disclosure – and weigh those circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor. …
[T]he Board applied the test for analogous art in keeping with the counsel of this court’s predecessor: “The differences are mere change of size and substitution of material of the most obvious kind, on a par with the differences between a hairbrush and a toothbrush.” In re Wolfe, 251 F.2d 854, 856 (CCPA 1958). Thus, on this record, this court affirms the findings of the Board and upholds its traditional tests for determining the scope of prior art analogous to the claimed invention.
In Dissent, Judge Newman argued that the toothbrush should not be considered a 103(a) reference.
The toothbrush art is not analogous to the hair brush art. Bigio’s patent application is directed to a hair brush, and his claims are limited to a hair brush.
Newman concluded with the money quote: “A brush for hair has no more relation to a brush for teeth than does hair resemble teeth.”
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Koito Manufacturing v. Turn-Key-Tech (Fed. Cir. 2004) (PDF).
In February 2002, Koito brought a declaratory judgment action against Turn-Key, requesting that Turn-Key’s patent covering an injection molding technique be declared invalid, unenforceable, and not infringed. (< ?xml:namespace prefix ="" st1 />U.S. Patent 5,045,268). The Jury issued a special verdict finding the patent invalid for lack of enablement, written description, and the addition of new matter. Additionally, the Jury found that the patent was not infringed and that several claims were anticipated and obvious. After the verdict, however, the district court judge granted in-part Turn-Key’s JMOL. On appeal, the Federal Circuit affirmed-in-part and remanded.The Appellate Panel held that Koito had not met its burden of showing non-enablement, lack of written description, impermissible new matter, anticipation, or obviousness.
We affirm (1) the jury’s verdict that Koito did not infringe the ’268 patent and (2) the district court’s grant of a JMOL with respect to the jury’s finding that the ’268 patent was not enabled, did not meet the written description requirement, and impermissibly added new matter.However, we vacate the district court’s denial of Turn-Key’s JMOL with respect to anticipation and obviousness.On remand, the district court should evaluate the evidence proffered by Koito … to determine whether the jury’s verdict of anticipation and obviousness was adequately supported.
Affirmed-in-part, Vacated-in-part, and Remanded.
Update:
The unanimous decision, which was returned by a three-judge panel on Monday, August 23, upheld an April 2003 jury verdict in the same case. As in this case, the court found that the manufacturing process Koito used to mold plastic tail light lenses in no way infringed on a patent for another process that was held by Turn-Key-Tech. (LINK)
Alphapharm PTY v. Tommy G. Thompson (Secretary of HHS) (D.D.C. 2004) (CA 03-2269).
By Mark Chael
Recently, the District Court in Washington, D.C. agreed with the Federal Circuit, the Fourth Circuit, and a District Court in Maryland by determining that the listing of patents in the Orange Book by the Food and Drug Administration (FDA) is merely “a ministerial act” and that the Hatch-Waxman Act does not require the FDA “to police the listing process by analyzing whether the patents listed by NDA (New Drug Application) applicants actually claim the subject drugs or applicable methods of using those drugs.”
In a case captioned, Alphapharm PTY Limited v. Tommy G. Thompson, the court reasoned that substantive patent analysis is beyond the expertise of the FDA and is a function they are not mandated to perform.Rather, substantive patent analysis is better left with the U.S. Patent and Trademark Office. The function of the FDA, on the other hand, is to assure the safety and availability of useful pharmaceutical compounds.The laws and regulations that govern the FDA, in particular those laws and regulations that govern the listing of patents in the Orange Book, “commit the resolution of disputes between ANDA (Abbreviated New Drug Application) applicants and patent holders regarding the validity or correctness of the listed patent information to actions between ANDA applicants and patent holders, rather than to FDA action.”
Note: This is the first post by patent attorney Mark Chael, PhD. Mark’s prior research in biochemistry, molecular biology, and cellular biology make him well equipped to understand the intricacies involved in biotech and pharmaceutical patents. He is an associate at the intellectual property law firm McDonnell Boehnen Hulbert & Berghoff in Chicago. [Brief Biography]
In the Matter of Certain Sildenafil (International Trade Commission) (Inv. No. 337-TA-489).
Pfizer brought this complaint against 15 companies that were importing forms of Viagra (sildenafil citrate) that infringed its patent. (U.S. Patent No. 5,250,534). In its decision, the ITC issued a general exclusion of such importation. The Commission found that the general exclusion was necessary because of the difficulty in identifying the source of the infringing products and because of the ease that sellers can mask or change their identity by operating over the Internet.
Pfizer has demonstrated that suppliers of infringing products could readily mask their identity or be replaced by other suppliers. Further, Pfizer has shown that there is a pattern of violation of section 337 and that it is difficult to identify the source of infringing products. As Pfizer has noted, eleven defaulting respondents have been found to be in violation of section 337. Pfizer has also shown that it is difficult to identify the source of infringing products, many of whom deal directly with U.S. customers over the Internet and can readily mask or change their identity.
Further, the Commission considered it important that Pfizer has established a strong market for its product and that foreign manufacturers can easily copy the pharmaceutical.
Comment: A General Exclusion Order is a broad remedy issued by the ITC that is directed to any article that infringes the patents-in-suit, rather than just those of the named respondents. Therefore, the exclusion applies to parties that were not part of the ITC proceedings.
In an extremely well written opinion by Judge Thomas of the 9th Circuit, the appellate court found that Grokster is not liable for the peer-to-peer swapping of copyrighted songs that occurs through its file-sharing software.
In the context of this case, the software design is of great import. As we have discussed, the software at issue in Napster I and Napster II employed a centralized set of servers that maintained an index of available files. In contrast, under both StreamCast’s decentralized, Gnutella-type network and Grokster’s quasi-decentralized, supernode, KaZaa-type network, no central index is maintained. Indeed, at present, neither StreamCast nor Grokster maintains control over index files. As the district court observed, even if the Software Distributors “closed their doors and deactivated all computers within their control, users of their products could continue sharing files with little or no interruption.” Grokster I, 259 F. Supp. 2d at 1041. Therefore, we agree with the district court that the Software Distributors were entitled to partial summary judgment on the element of knowledge. [Because knowledge is a required element of contributory copyright infringement, Grokster could not be held liable.]
NOTE: This does not mean that individual users will not be held liable for copyright infringement using Grokster.
Utica Enterprises v. Federal Broach and Machine (Fed. Cir. Aug. 19, 2004) (nonpublished opinion).
Utica sued Federal Broach for infringement of its patented metal finishing process, known as “broaching.” (U.S. Patent No 6,256,857). After construing the claims in a Markman hearing, the Michigan district court entered summary judgment of non-infringement for Federal Broach.
Utica appealed the judgment, arguing incorrect claim construction. The Federal Circuit (LOURIE, J) held that the court unduly limited claim terms, and thus vacated and remanded. Mayer, CJ, dissented without opinion.
In re Klopfenstein and Brent (Fed. Cir. 2004) (three day poster presentation at academic conference without any paper distribution or indexing was a printed publication under 102(b)).
More than one year prior to filing their application, the inventors of a new method of peparing foods using extruded soy fiber presented a poster presentation at two academic conferences (for a total of less than 3 days). No copies of the presentation were distributed. The Patent Examine rejected the claims as anticipated by the prior publication. The applicants did not dispute that the presentation fully disclosed the invention. Rather applicants argued that the presentation was not a prior art publication under 35 USC 102(b).
The only question in this appeal is whether the Liu reference constitutes a “printed publication” for the purposes of 35 U.S.C. § 102(b). As there are no factual disputes between the parties in this appeal, the legal issue of whether the Liu reference is a “printed publication” will be reviewed de novo.
The Appellate Panel affirmed the rejection holding that distribution or indexing is not required of printed publications.
The reference itself was shown … to members of the public having ordinary skill … Those members of the public were not precluded from taking notes or even photographs of the reference. And the reference itself was presented in such a way that copying of the information it contained would have been a relatively simple undertaking for those to whom it was exposed-particularly given the amount of time they had to copy the information and the lack of any restrictions on their copying of the information. For these reasons, we conclude that the Liu reference was made sufficiently publicly accessible to count as a “printed publication” under § 102(b).
Fisher-Price v. Safety 1st (Fed. Cir. 2004) (not citable as precedent)
Fisher-Price is the assignee of several patents on baby items, such as carriers, strollers and bassinets. (e.g., U.S. Patent No. 6,274,755). Fisher-Price sued Safety 1st for infringement and won a jury trial. The district court denied Safety 1st’s JMOL motion on validity, infringement, and the period of damage recovery. Safety 1st appealed.
The Federal Circuit affirmed, finding that the patents were valid and infringed. Ironically, the only modification to the district court’s order was to expand the scope of damages in Fisher-Price’s favor.
Just a snippet of this case out of Iowa: Engineered Products v. Donaldson Co. (N.D. Iowa 2004)
Donaldson was found liable for infringement of Engineered Product’s patent on a mechanical air filter. (U.S. Patent No. 4,445,456). In a post trial argument, Donaldson’s attorneys argued that the patent law videotape prepared by the Federal Judicial Center, which was intended to provide potential jurors with an introduction to patent law should not have been shown during jury selection. The judge was not happy with this argument:
While the undersigned has been restrained in his ten years as a federal district court judge about characterizing any party’s argument as “frivolous,” Donaldson’s argument concerning use of the videotape is one of the rare ones for which the undersigned can find no other characterization. Zealous representation at times requires judicious determination of which arguments are worth advancing or preserving, and which are not, or the credibility of even meritorious arguments may be called into question by the assertion of meritless ones.
Donaldson announced that it intends to “vigorously challenge the judgment and will appeal the decision to the Federal Circuit Court of Appeals.” The appeal will likely be on other grounds. The patent expired in 2001, but EPC was suing for past damages.
Linear Technology v. Impala Linear and Maxim Integrated (Fed. Cir. 2004)
After losing an appeal last month, Maxim filed a request for an en banc rehearing. Although the court denied the petition to rehear, it did issue a substitute opinion in the case.
Summary:
Because genuine issues of material fact have been raised concerning Maxim’s contributory infringement or inducement, we vacate the district court’s summary judgment of no contributory infringement or inducement of the current reversal method claims of the ’178 patent.Because Maxim failed to raise a genuine issue of material fact, the matter of inventorship was amenable to determination on summary judgment on the undisputed factual premises.On these premises, the district court correctly held that Vinsant was not a joint inventor of the ’178 patent.
As in the prior opinion,the court found error in the district court’s claim construction. Vacated-in-part, affirmed-in-part, and remanded.
German plant breeder William Elsner filed for a plant patent on his new variety of geraniums. After receiving a 102(b) rejection from the Examiner that was affirmed by the BPAI, Elsner appealed to the Federal Circuit.
The Appellate Panel vacated and remanded.
We agree that the publication of the (international) applications coupled with foreign sales of the plants may constitute a §102(b) bar to patentability.However, because the record is silent on the extent to which the foreign sales were known to the public, and because the Board did not adequately address the degree to which availability of the plants through foreign sales enabled the preparation of the claimed plants, we vacate the Board’s decisions in both cases and remand for further proceedings.
Aspex Eyewear v. Concepts in Optics (Fed. Cir. August 12, 2004) (not citable as precedent).
Aspex sued Concepts for infringement of its patented technology that covers a magnetically attachable auxillary lens for eyeglasses. (U.S. Patent No. RE 37,545 E). The district court granted summary judgment for the defendant based on a finding of invalidity under 35 USC 102 — finding that another person had invented the claimed eyeglasses before the critical date.
On appeal, the Appellate Panel reversed and remanded for two primary reasons:
1) drawings relied upon by the district court were not “printed publications” because there was no evidence of public availability; and 2) the testimony of prior public use (or “known … by others”) was not incontestable on summary judgment.
The International Trade Commission (ITC) has issued a general exclusion order prohibiting the unlicensed entry of plastic grocery and retail bags that infringe Superbag’s patented technology. (U.S. Patent No. 5,188,235). The Commission also determined that “public interest factors” do not preclude the issuance of the exclusion order.
Superbag had filed a complaint against four parties:
Thai Plastic Bags of Thailand; Hmong Industries of St. Paul, Minnesota; Spectrum Plastics of Cerritos, California; and Pan Pacific Plastics of Union City, California.
In an appeal from a decision of the PTO Board, the Federal Circuit affirmed the rejection of claims directed to isolated DNA molecules encoding TNF binding protein II (TBP-II) under the written description requirement of 35 U.S.C. § 112.
Appellants had purified TBP-II from urine and determined (a) the amino acid sequence of an N-terminal portion of the protein, (b) the protein’s molecular weight, and (c) that the protein inhibited TNF activity. Appellants then pursued, in separate divisional applications, claims directed to proteins having the partial sequence, molecular weight, and inhibitory activity described and claims directed to isolated DNA molecules encoding such proteins. The DNA claims were rejected under § 112 as lacking an adequate written description in the specification. Appellants appealed to the Board, which affirmed.
Appellants asserted that because the PTO had effectively conceded that claims to the TBP-II protein were adequately described in the specification, the claims to isolated DNA molecules encoding the TBP-II protein were therefore adequately described in the specification. Specifically, Appellants argued that because the complete amino acid sequence of a protein is an inherent property of an isolated, fully characterized protein, and the determination of a protein’s complete amino acid sequence puts one in possession of all DNA sequences encoding that protein (as a result of the unequivocal correspondence between amino acids and DNA codons in the genetic code), Appellants’ full characterization of TBP-II (i.e., determination of its N-terminal amino acid sequence, molecular weight, and inhibitory activity) demonstrated possession of all DNA sequences encoding TBP-II. The PTO countered that because Appellants’ specification included neither the complete amino acid sequence of TBP-II nor any actual DNA sequence, and disclosed the sequence of only ten of the 185-192 amino acids that make up TBP-II, Appellants had not demonstrated possession of all DNA sequences encoding TBP-II.
The Court noted that while “the state of the art has developed such that the complete amino acid sequence of a protein may put one in possession of the genus of DNA sequences encoding it,” Appellants had not disclosed the complete amino acid sequence of TBP-II, but rather, had provided only a partial sequence of the protein. In addition, the Court concluded that Appellants’ possession of TBP-II “says nothing about whether they were in possession of the protein’s amino acid sequence [since] Appellants have not provided any evidence that the full amino acid sequence of a protein can be deduced from a partial sequence and the limited additional physical characteristics that they have identified.” With respect to the DNA claims at issue, the Court determined that absent a description of the complete TBP-II amino acid sequence or any evidence of a “known or disclosed correlation between the combination of a partial structure of a protein, the protein’s biological activity, and the protein’s molecular weight, on the one hand, and the structure of the DNA encoding the protein on the other,” the Board’s decision to affirm the rejection of Appellants’ DNA claims was proper.
NOTE: This is the first post by patent attorney Donald Zuhn, PhD. Don is a true expert in cutting edge biotech patent law and practices both prosecution and litigation at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. [Brief Biography].
