INNOVA / Pure Water v. Safari Filtration Systems (Fed. Cir. 2004) (CLEVENGER, Rader, and Linn, JJ.)
Innova sued Safari for infringement its patented water filter assembly. (U.S. Patent No. 5,609,759). After construing the claims, the District Court (M.D. Florida) granted Safari’s motion for summary judgment of noninfringement.
Innova’s appeal with patent turns on the correct interpretation of the disputed claim term, “operatively connected.” In particular, Innova challenged that the District Court improperly imported a “tenacious physical engagement” limitation into claim language that does not require any such thing. The Appellate Panel agreed and vacated the decision in-part.
The district court erred. The asserted claims do not require that the filter tube and cap be affixed to one another in a manner that results in the two components forming a unitary structure. Neither party asserts that the term “operatively connected” is a technical term having a special meaning in the art of water filtration. Rather, it is a general descriptive term frequently used in patent drafting to reflect a functional relationship between claimed components. Generally speaking, and as used in the ‘759 patent, it means the claimed components must be connected in a way to perform a designated function. In the absence of modifiers, general descriptive terms are typically construed as having their full meaning.
NeoMagic v. Trident Microsystems (Fed. Cir. 2004) (04-1046)(NONPRECEDENTIAL).
NeoMagic sued Trident for infringement of its patent covering a graphics engine/memory integrated circuit (U.S. Patent No. 5,703,806). After construing the claims in a Markman hearing, the Delaware District Court dismissed the suit on summary judgment based, holding that the claims were not infringed as a matter of law. In a first appeal, the Federal Circuit remanded based on improper claim construction.
After a second summary judgment dismissal for noniningringement, the case appeared before the Federal Circuit again. This time, the Appellate Panel affirmed the dismissal, holding that the dismissal was proper because Trident’s products did not have a “second power supply” as recited in the claims.
Engate, Inc. v. Esquire Deposition Services (N.D. Ill. 2004)
In a patent infringement suit over Engate’s patented real-time transcription service technology, the District Court dismissed the defendant’s unfair competition counterclaim and granted in part defendant’s summary judgment of invalidity. The court looked to instances of real-time transcription in some courtrooms as evidence of public use sufficient to invalidate some of the claims.
IN RE CHATAM INTERNATIONAL INCORPORATED (Fed. Cir. 2004) (Trademark Case)
The Federal Circuit (RADER with CLEVENGER and SCHALL) affirmed the TTAB’s decision to refuse to register the mark JOSE GASPAR GOLD in connection with tequila because of a perceived likelihood of confusion with GASPAR’s ALE.
Although the two names had only GASPAR in common, the court found that the other terms could be disregarded from the analysis because 1) ALE is generic; 2) GOLD establishes premium quality rather than name recognition; and 3) JOSE simply reinforces GASPAR as a name.
The court also supported the Board’s finding of a close relationship between tequila and beer or ale.
In this case, as in Majestic Distilling, the Board correctly determined that tequila and beer or ale are inexpensive commodities that consumers would be unlikely to distinguish by manufacturer.
ELSTER ELECTRICITY v. SCHLUMBERGER (Fed. Cir. 2004) (NONPRECEDENTIAL)
In this appeal of a summary judgment of invalidity for lack of enablement, the Federal Circuit affirmed.
Elster’s patent relates to a power supply of an electric energy meter that uses a specialized transformer. (U.S. Patent 5,457,621). At the district court, the judge found that the patent lacked enablement because the specification only enabled a “controller that responds to the third winding,” while the claim required a response to the “second winding.” Elster appealed, but the Appellate Panel affirmed, holding that the “written description fails to teach a response between the second and third winding, the district court ccorrectly concluded that [the] claims … were not enabled.”
Mars v. Heinz & Del Monte (Fed. Cir. July 29, 2004).
Mars filed a patent infringement suit against Heinz, alleging infringement on its patented pet food. (U.S. Patent 6,312,746)(A dual texture animal food product with a soft inner component surrounded by a harder, more rigid shell). After a Markman hearing, the district court issued summary judgment of noninfringement to Heinze.
On appeal, the Federal Circuit breathed new life into Mars’ claims by issuing a new construction of claim terms and remanding.
We conclude that: (1) “ingredients” as used in the phrase “a mixture of lipid and solid ingredients” refers to the components of the inner core at any time after they have been mixed together, and (2) the phrase “containing a mixture” is open-ended. Thus, the claim language, “containing a mixture of lipid and solid ingredients,” does not exclude the presence of additional, unnamed ingredients in the inner core mixture that are neither lipids or solids. Since genuine issues remain as to infringement under this construction, we vacate the district court’s grant of summary judgment of non-infringement and non-infringement under the doctrine of equivalents and remand for further consideration.
High Concrete Structures v. New Enterprise Stone and Lime (Fed. Cir. July 29, 2004).
On appeal from a district court’s summary judgment based on failure to comply with the best mode requirement, the Federal Circuit (Newman, Mayer, Clevenger) reversed and remanded.
High Concrete sued New Enterprise for infringement of its patent on “double-tees” for adjusting the orientation of bulky cargo. (U.S. Patent No. 5,947,665). On defendants’ motion, the district court held the patent invalid for “failing to disclose that the inventors’ preferred mode of practicing the invention was to use the crane to tilt the loaded frame at the time that the crane loaded the cargo onto the frame.”
The appellate panel reversed:
Deliberate concealment is not charged. The best mode requirement of §112 is not violated by unintentional omission of information that would be readily known to persons in the field of the invention … Known ways of performing a known operation cannot be deemed intentionally concealed absent evidence of intent to deliberately withhold that information.
Another Ronald A. Katz patent is up for reexam. An ex-parte reexamination has been requested for U.S. Patent No. 5,561,707 (Telephonic-Interface Analysis System). Interestingly, this same patent is undergoing a director ordered reexamination.
The Federal Circuit has created a stir in its recent decision to grant an en banc review of Phillips v. AWH.
Chief Judge Mayer dissented from the court’s decision to review. Mayer argued that the real question for review is whether Markman was correctly decided.
Until the court is willing to reconsider its holdings in Markman v. Westview Instruments … that claim construction is a pure question of law subject to de novo review in this court, any attempt to refine the process is futile. Nearly a decade of confusion has resulted from the fiction that claim construction is a matter of law, when it is obvious that it depends on underlying factual determinations which, like all factual questions if disputed, are the province of the trial court, reviewable on appeal for clear error. To pretend otherwise inspires cynicism. Therefore, and because I am convinced that shuffling our current precedent merely continues a charade, I dissent from the en banc order.
My former boss, Patricia Thayer at Heller Ehrman commented in the Recorder that she thinks Mayer may get his wish.
“I’d love it if the federal district courts got together” to write an amicus brief on the issue, Thayer said. “It’s difficult for them that [they are accorded] no deference. I wouldn’t be surprised if that gets changed in the process.”
This is the fourth article in our coverage of the Phillips en banc appeal. Read Part I, Part II, and Part III.
This is Part III of our coverage of the Phillips – AWHen banc order. Read Part I and Part II.
… In concurrence, Judge Rader argued for en banc ruling on another issue. Rader’s concern is whether claim construction is even amenable to “strictly algorithmic rules.” As an example, Rader questions whether an approach of first looking at the specification, folowed by examining dictionary definitions would be workable. Alternatively, claim construction may be better achieved by chosing a methodology on a case by case basis — “thus entrusting trial courts to interpret claims as a contract or statute.”
The Federal Circuit has agreed to rehear the appeal en banc in order to resolve issues concerning the construction of patent claims and the use of dictionaries. The following questions are to be briefed:
1. Is the public notice function of patent claims better served by referencing primarily to dictionaries to interpret a claim term or by looking primarily to the patentee’s use of the term in the specification?
2. If dictionaries should serve as the primary source for claim interpretation, should the specification limit the full scope of claim language (as defined by the dictionaries) only when the patentee has acted as his own lexicographer or when the specification reflects a clear disclaimer of claim scope? If so, what language will satisfy those conditions?
3. If the primary source for claim construction should be the specification, what use should be made of dictionaries?
4. Instead of viewing the claim construction methodologies in the majority and dissent of the now-vacated panel decision as alternative, conflicting approaches, should the two approaches be treated as complementary methodologies such that there is a dual restriction on claim scope, and a patentee must satisfy both limiting methodologies in order to establish the claim coverage it seeks?
5. When, if ever, should claim language be narrowly construed for the sole purpose of avoiding invalidity.
6. What role should prosecution history and expert testimony play in determining the claim term meaning?
7. Is it appropriate for this court to accord any deference to any aspect of trial court claim construction rulings? If so, on what aspects, in what circumstances, and to what extent?
Amicus curiae briefs may be filed and should be limited to 5,000 words, and be filed within sixty days from the date of this Order.
The USPTO has announced a reexamination request of PharmaStem Therapeutics patent on technology for the “preservation of fetal and neonatal hematopoeitic stem and progenitor cells of the blood.” (U.S. Patent 5,004,681). The reexam was requested by a competitor, ThermoGenesis.
ThermoGenesis commented that it “made the request for re-examination based on our assessment that these patent claims do not distinguish over the “prior art,” including the publication of several medical journal articles describing similar techniques that predated the patents.” According to Nicholas Didier, President and CEO of PharmaStem, approximately two thirds of the cord blood banking industry operates under a PharmaStem license.
The patent at suit issued in 1991 and survived a first reexamination in 2000.
In an inventorship dispute, over an insulin delivery system, the federal circuit (LOURIE, CLEVENGER, and GAJARSA) reversed a jury’s verdict to add an inventor to the disputed patent.
While circumstantial evidence may in some cases be sufficient to surmount the clear and convincing evidence burden of proof, we conclude that the circumstantial evidence presented here is insufficient and that the jury’s verdict cannot stand.
In a concurring opinion, LOURIE argued that the burden of to show joint inventorship should be a preponderance of the evidence rather than clear and convincing.
Tycor sued the California DOT for infringement of its patented retaining wall technology. (U.S. Patent 6,036,405). The trial court granted summary judgment to the DOT based on its noninfringement analysis. On appeal, the Federal Circuit vacated, holding that the lower court “erred in its analysis of infringement under the doctrine of equivalents.”
The Appellate Panel (LOURIE, FRIEDMAN, CLEVENGER) found that equivalents of a claimed “slot” need not perform a “sliding function” as requred by the lower court.
Dr. Huang sued, alleging that he should be a named inventor of CIT’s automatic DNA sequencing patents. As evidence, Dr. Huang submitted his own testimony and his laboratory notebooks. The Court found that the lab notebooks were insufficient because they were not witnessed or reliably dated.
Only in those instances where Dr. Huang’s lab notebooks were corroborated by independent evidence were they considered at all persuasive.
AFG Indus. v. Cardinal IG CO. (Fed. Cir. July 13, 2004)
In an infringement suit involving AFG and ASAHI’s patented window treatment, the District Court (E.D. Tenn) held that Cardinal did not infringe. (U.S. Patent 4,859,532). On appeal, the Federal Circuit (RADER) vacated and remanded.
A structure that falls within the meaning of “layer” due to its structure and optical properties remains a single layer whether it was deposited in a single sputtering operation or multiple operations. By the same token, that unitary structure of the same material that constitutes a “layer” does not become multiple layers because the manufacturer decided to deposit it in multiple passes rather than in a single pass. The method of making is not determinative of the structure and properties of a “layer.” Because the trial court considered the method of creating the layer dispositive of its structure and character in the accused LoE2 products, this court vacates the grant of summary judgment.
Because genuine issues of material fact preclude summary judgment of noninfringement of the ’532 patent, this court vacates and remands.In dissent, J. NEWMAN argued that the case should not be remanded again, but rather, should be decided by the appellate panel.
I respectfully dissent from the panel’s decision to remand this case for the third time on the issue of claim construction with respect to the claim term “layer.” Claim construction is a matter of law, and as such it receives de novo review. The purpose is objective correctness; the record is complete, the question is ripe. It is time for decision, not for remand.
There have been three Markman hearings and now three appeals, all directed to the meaning of the term “layer.” For the first two hearings the definition was applied to the titanium dioxide deposits, and in the second appeal this court held that a layer is a material of optically significant uniform chemical composition. In the third Markman hearing the district court held that Cardinal’s multiple deposits of its center zinc oxide component produced multiple layers. This court now appears to hold that its definition in the previous appeal, wherein “layer” was defined in the context of the “interlayers” of titanium dioxide, bars the district court from considering the additional aspect of whether multiple sputtering deposits can produce multiple “layers,” unless they affect the structure and optical properties. However, when the later claim construction is made in a different technical context from that which was earlier considered, in the interest of correctness the court must consider the new context.
This case was filed in 1996. Before the district court the parties produced extensive evidence, in the form of expert and other witness testimony, and physical exhibits and demonstrations. The district court has three times held, on summary judgment upon deciding the legal question of claim construction, that there is no infringement. It is a relatively simple technical question, for which the record is fully developed. After eight years this question of law requires finality, not a fourth cycle of Markman hearing and appeal. From my colleagues’ remand for this purpose, I respectfully dissent.
In a declaratory action over a method of browning precooked meats, an Oklahoma district court granted summary judgment of invalidity and unenforceability based on both prior use and prior sale of ConAgra’s patented method. (United States Patent 5,952,027). In addition, the Jury determined that ConAgra’s pre-litigation actions constituted tortious interference and created antitrust violations.
On appeal, the Federal Circuit (GAJARSA) affirmed all appealed actions except for the antitrust holdings.
Because the district court erred, however, in allowing the jury to decide Unitherm’s antitrust claims despite the total absence of economic evidence capable of sustaining those claims, we vacate the judgment finding ConAgra liable for violating § 2 of the Sherman Act. We also vacate all damages awarded consequent to antitrust liability. We remand the matter to the district court for further proceedings consistent with this opinion.
Prior to litigation, ConAgra wrote to several companies who sell equipment for preparing and browning pre-cooked meats. ConAgra attached a copy of the ‘027 Patent to that letter, which included the explicit warning:
“Others in the industry may approach your company regarding this patent, and we would appreciate it if you would inform them that we intend to aggressively protect all of our rights under this patent.”
These letters formed the basis of Unitherm and Jennie-O’s claims of tortious interference. Surprisingly, the court did not mention the “objectively baseless” standard that it recently outlined in Globetrotter Software.
Plaintiff McNulty is the exclusive licensee of a patent entitled “Stun Gun with Low Battery Indicator and Shutoff Timer.” (U.S. Patent 5,193,048). The district court granted summary judgment of non-infringement to Taser and the other co-defendants (Cities of Los Angeles, Ontario, and Buena Park California).
On appeal, the Federal Circuit affirmed,
Accepting all of McNulty’s evidence as true and drawing all inferences in his favor, we agree with the district court that there is no genuine issue of material fact and that Taser’s U3400 and M-series products do not infringe the “trigger means” limitation…. Accordingly, the decision of the district court is affirmed.
Update from TASER’s Press Release:
“We were confident that the District Court’s ruling would be upheld,” said Doug Klint, Vice President and General Counsel for TASER International, Inc. “Our intellectual property portfolio is very strong, and there was never any evidence that TASER International infringed on Mr. McNulty’s patent. We feel vindicated that both the District Court and the Court of Appeals have ruled in our favor,” concluded Mr. Klint.
Diversified Dynamics v. Wagner Spray Tech (Fed. Cir. 2004) (NONPRECEDENTIAL)
In a patent infringement suit involving Diversified’s patented “duckbill check valve” for controlling paint flow to a paint-roller, the Federal Circuit reversed the district court’s dismissal of claims. The appellate panel found that a prior settlement agreement between the parties did not bar the present suit.
We conclude that the plain language of the release requires a narrow construction. The plain language releases Wagner from “any and all actions … arising out of or in any way related to the ‘176 Patent” (emphasis added). We agree with both of the parties that the release is unambiguous; however, we agree with Diversified as to its proper construction. The phrases “arising out of” and “in any way related to” refer back to the ‘176 patent and require a relationship between the action and the patent itself. We similarly note the order of the language in the release. Under the language of the release, the issue is whether an action is related to the ‘176 patent, not whether the ‘176 patent is related to the action. Based on our reading of the release, we conclude that the district court improperly construed it to preclude Diversified’s suit on the ‘123 patent. As discussed, we focus on the nature of the action and its relation to the ‘176 patent. Here, the action arises out of and is related to the ‘123 patent.
PELLEGRINI v. ANALOG DEVICES (Fed. Cir. July 8, 2004)
Plaintiff Pellegrini appealed to the Federal Circuit after the district court granted partial summary judgment in favor of Analog. In the patent infringement suit, Pellegrini alleged that Analog was infringing its patented brushless motor drive circuits. (U.S. Patent 4,651,069). Because of Analog’s international manufacturing process, the case provided a novel question for the Federal Circuit.
This case presents the question whether components that are manufactured outside the United States and never physically shipped to or from the United States may nonetheless be “supplie[d] or cause[d] to be supplied in or from the United States” within the meaning of 35 U.S.C. § 271(f)(1) if those components are designed within the United States and the instructions for their manufacture and disposition are transmitted from within the United States. This is a matter of first impression for this court. According to § 271(f)(1),
Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such a manner as to actively induce the combination of such components outside the United States in a manner that would infringe the patent if such combination occurred within the United States shall be liable as an infringer.
35 U.S.C. § 271(f)(1) (2000). Section 271(f) was enacted in the wake of the United States Supreme Court’s decision in Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (1972), in which the Court acknowledged that unauthorized manufacturers of patented products could avoid liability for infringement under the then-existing law by manufacturing the unassembled components of those products in the United States and then shipping them outside the United States for assembly. Congress enacted § 271(f) in order to close that loophole.
In its opinion, the appellate panel determined that Section 271 requires “physical supply of components, not simply to the supply of instructions or corporate oversight.” Because the U.S. division of Analog only provided designs and corporate oversight, no infringing activity took place. Affirmed.
