Kinzenbaw and Kinze Manufacturing v. Case Corporation and New Holland (Northern District of Iowa, May 20, 2004)
In a patent infringement suit over a seed planter, the Iowa District Court refused to disqualify Plaintiff Kinze’s attorneys, Perkins Coie, even though Perkins also represented Defendant Case in other matters. Perkins’ work for Case had not involved patent matters.
Kinze’s original attorneys had been disqualified after working on patent matters for both Kinze and Case.
Knoll Pharmaceutical Co. v. Teva Pharmaceuticals USA, Inc. (Fed. Cir. May 19, 2004).
The Federal Circuit reversed and remanded the N.D. Ill. district court judgment of invalidity. (U.S. Patent 4,587,252). The patent covers a method for treating pain with hydrocodone and ibuprofen (an NSAID) and is sold as Vicoprofen®.
In reversing the district court’s obviousness finding, the appellate panel found that:
Although the prior art appears to suggest combining an opioid, such as hydrocodone, with various NSAIDs, . . . [t]here appears to be no record of evidence of prior art teaching or suggesting the enhanced biomedical effect of the combination of hydrocodone and ibuprofen.
Additionally, the district court excluded some evidence of unexpected results because those results were discovered after the patent had issued. In disagreement, the panel would allow such evidence:
Evidence developed after the patent grant is not excluded from consideration, for understanding of the full range of an invention is not always achieved at the time of filing the patent application. It is not improper to obtain additional support consistent with the patented invention, to respond to litigation attacks on validity.
The inherent contradiction of this opinion: Obviousness is judged at the time of the invention, but this case allows evidence that was developed after the invention to be used in determining obviousness.
In re American Academy of Science Tech Center (Fed. Cir. May 13, 2004)
The Federal Circuit affirmed the Patent Board’s rejection of several claims during reexamination.
The patent claims a priority date back to 1982 and describes distributing processing functionality among several computers:
user applications are run on the user stations, while the database resides on a dedicated database computer. Several user stations are networked to the database computer so that a user application running on a user station can store data to and retrieve data from the database residing on the database computer. The patent describes using a “data base simulator” to “enable[ ] an application program . . . at the user station to call for storage or retrieval of data from the data center as though it were calling for data from a data base resident at the user station . . . .”
The Federal Circuit agreed that the broadest reasonable construction of the claim language allows prior art to read on the claims. Thus, the claims were properly held invalid.
Microchip Technology v. U.S. Philips and Philips Electronics N.A. (Fed. Cir. May 13, 2004)
Philips owns patents relating to a two-wire bus for communicating between integrated circuits (I2C). Microchip asserted that it did not infringe and that it was a licensee (by succession). The question before the Court was who determines whether there is an obligation to arbitrate.
Although the Federal Circuit generally follows local circuit law regarding non-patent issues, in this case the Court disagreed with prior 9th Circuit holdings. Instead, the Court held that under Supreme Court case law obligation to arbitrate is a threshold matter for the district court to determine. Thus, the Federal Circuit remanded for the District Court to determine whether Microchip was a successor party to the 1983 agreement before any issues may be referred to arbitration.
The appellate panel also found that the arbitration clause was not expired:
It is clear on the face of the 1983 agreement’s arbitration clause that the obligation to arbitrate survives expiration of the agreement’s other provisions. The arbitration clause specifically provides that “[a]ll disputes arising out of or in connection with the interpretation or execution of this Agreement during its life or thereafter” are subject to arbitration.
Appellate Jurisdiction: The Court also held that an order compelling arbitration is appealable:
An order compelling arbitration is in effect a mandatory injunction. Denial of a mandatory injunction is ordinarily appealable under section 1292(a)(1). (Citations omitted)
More info about the I2C technology is here:
Philips was the inventor of the Inter-IC or I²C-bus nearly 20 years ago, and it is now firmly established as the worldwide de-facto solution for embedded applications. It is used extensively in a variety of microcontroller-based professional, consumer and telecommunications applications as a control, diagnostic and power management bus. As a two-wire serial bus, its inherently simple operation was crucial to its emergence as the worldwide de-facto standard.
In re John Ngai and David Lin (Fed. Cir. May 13, 2004)
Ngai invented a new method for amplifying and normalizing RNA and submitted a patent application for his invention.
The Patent Board rejected Claim 19, which was drawn to a kit with printed instructions for performing the method. The Federal Circuit affirmed the Patent Board’s rejection of the claim.
All that the printed matter does is teach a new use for an existing product. As the Gulack court pointed out, “[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” Id. If we were to adopt Ngai’s position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product. This was not envisioned by Gulack. Ngai is entitled to patent his invention of a new RNA extraction method, and the claims covering that invention were properly allowed. He is not, however, entitled to patent a known product by simply attaching a set of instructions to that product.
Medtronic Vascular, Inc. v. CORDIS Corp. (3rd Cir. April 30, 2004)
Medtronic AVE alleged that Cordis infringed its coronary stent patents. In response, Cordis asserted that it held a license to the patents under a Settlement and License Agreement that it entered into with the parent corporation of Medtronic AVE to settle prior litigation.
Although the Agreement included an arbitration provision, the District Court held that the dispute was not arbitrable, and enjoined arbitration.
The 3rd Circuit panel vacated and remanded, finding that the the arbitration clause was applicable under New York law.
Intirtool, Ltd. (MASS-TEX) v. Texar Corp. (ToolPro) (Fed. Cir. May 10, 2004).
In this patent infringement case, the district court found that Intirtool’s patent was invalid for failure to satisfy the written description requirement. (U.S. Patent 5,022,253) Additionally, the district court concluded that damages accrued prior filing the lawsuit were barred by laches. The Federal Circuit reversed these rulings for either clear error or abuse of discretion.
The first dispute revolved around whether the preamble:
hand-held punch pliers for simultaneously punching and connecting overlapping sheet metal
restricted the claims to pliers that have a connecting functionality.
The Federal Circuit held that the preamble was not limiting in this case because the body of the claim was described in such exacting structural detail that deletion of the preamble would not affect the claim. (NOTE: The body of claim 1 is quite large for this type of technology, listing 60+ lines in the patent).
In terms of inequitable conduct and laches,
the district court based its conclusion that Intirtool had engaged in inequitable conduct on its view that Intirtool had, during the prosecution of the ’253 patent, “repeatedly stated, and indeed stressed, that the described tool simultaneously punched holes and connected ceiling grids, knowing that this assertion was false.”
The Federal Circuit again disagreed with the district court – finding that the “connecting” references made by the patentee were “merely preamble features of the invention.”
Housey Pharmaceuticals, Inc. v. Astrazeneca UK Ltd. & Bristol-Myers Squibb & Merck, et al.(Fed. Cir. May 7, 2004).
In an infringement suit concerning Housey’s assay method patent, the Federal Circuit held that the definition of an “inhibitor or activator” included substances that both directly and indirectly affect a protein of interest. (U.S. Patent 5,688,655, et al.) The Court arrived at its decision based on the plain meaning of the terms (from dictionaries) and because the patent did not “clearly disavow this broad plain meaning.” Invalidity affirmed.
In dissent, Judge Newman argued that
My colleagues’ approach to construction is based on confusing recent pronouncements of panels of this court, contravening earlier statements of precedent, thus adding to the confusion. . . . It is curious indeed to announce a “heavy presumption” that the meaning of a term in a patent claim is unencumbered by the specification, and to place a “heavy burden” on overcoming that presumption. . . . The written description is not an also-ran in claim construction, as the panel states; it is the primary resource in understanding the claims.
Elan Corp. v. Andrx Pharmaceuticals, Inc. (Fed. Cir. May 5, 2004)
In this case, the Federal Circuit determined that there was no on-sale-bar, thus reversing the district court’s finding of invalidity.
More than one year before filing for a patent, Elan made several offers to enter into a license under a patent for future sales of their invention “when and if it had been developed.”
The court found that this was not an offer to sell but rather a permissible offer to license because the communication was not a definite offer including material terms.
The letter . . . lacked any mention of quantities, time of delivery, place of delivery, or product specifications beyond the general statement that the potential product would be a 500 mg once-daily tablet containing naproxen. Moreover, the dollar amounts recited . . . are clearly not price terms for the sale of tablets, but rather the amount that Elan was requesting to form and continue a partnership with Lederle. Indeed, the letter explicitly refers to the total as a “licensing fee.”
Stevens v. Tamai (May 4, 2004) (Correction Tape Dispenser)
In an interference proceeding, The Federal Circuit reversed the Patent Board’s holding.
Tamai’s application was a continuation (A3) of a continuation (A2) of an original (A1). Unfortunately (for Tamai), he failed to properly submit a translation of A2 to the Board to prove the lineage. The Court found for Stevens because Tamai’s priority claim failed. The real lesson in this case is to follow the rules of the Patent Board. A timely authenticated translation may have won the case for Tamai.
Vanderlande Industries v. International Trade Commission
The Appellate Court affirmed the ITC’s holding that Vanderlande unlawfully imported a sorting system. (U.S. Patent No. 5,127,510). Vanderlande was unable to show that the patent owners (Siemens/Rapistan) committed the first element of equitable estoppel:
(1) The patentee, who usually must have knowledge of the true facts, communicates something in a misleading way, wither by words, conduct or silance.
Thus, the court found no estoppel. Additionally, the ITC’s claim construction was affirmed.
In an updated concurrence, J. Gajarsa adds firepower to his disagreement with the newly defined experimental use exception:
According to the majority, SKB’s testing of PHC’s performance as a human antidepressant was not necessary to reduce PHC to practice. The majority does not make clear, however, why testing a light pole’s performance at illumination under severe weather conditions was necessary to reduce the light pole to practice, Manville, why testing an all-weather activity mat’s performance in harsh weather was necessary to reduce the mat to practice, Seal-Flex, or why testing a floating dock’s performance in rough, choppy water was necessary to reduce the dock to practice, EZ-Dock.
In all four cases, the claims at issue were product claims that did not claim the tested features explicitly. In all four cases, the patentees possessed the claimed product in substantial enough form to test their products’ performance at their intended functions. The majority does not explain why only one of these four patentees had reduced its claimed invention to practice sufficiently to preclude the experimental use doctrine.
SmithKline Beecham v. Apotex: The concurrence.
Judge Gajarsa filed a Concurrence in SKB based upon his sua sponte analysis of Section 101. SKB had argued that its claimed compound (PHC hemihydrate) had been seeded in the environment and, once seeded, will naturally contaminate any synthetically made PHC anhydrate.
J. Gajarsa agreed that the manufacture of PHC hemihydrate could be “a natural physical process” occurring “under normal climactic conditions and with no human intervention,” and thus found that it was an unpatentable process of nature.
In short, patent claims drawn broadly enough to encompass products that spread, appear, and “reproduce” through natural processes cover subject matter unpatentable under Section 101–and are therefore invalid.
Finally, the Concurrence derided the Majority’s approach, saying that it has created “unfortunate precedent that will complicate future considerations of the experimental use doctrine.”
This is a second installment the SKB v. Apotex case brief
Experimental use was a major issue in the case. According to the court, experimental use may only be used to negate a 102(b) public use if the purpose of the experimental use was to assist in designing or testing of a claimed feature. Thus, in SKB, the “clinical trials tested only the safety and efficacy of PHC hemihydrate as an antidepressant” and were not an experimental use of the chemical compound as claimed in claim 1.
One striking idea from the case is that experimental use is now analyzed on a claim-by-claim basis. Thus, the court found that the clinical trials “may serve to negate a public use bar with regard to the inventions claimed in the more specific claims of the ’723 patent.”
Rather than determining whether the invention was undergoing experimental use, courts must now determine whether an alleged experimental use negates a 102(b) public use for each claim individually.
Smithkline Beecham Corp. (SKB) v. Apotex Corp. (Fed. Cir. 2004)
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(Figure shows IR spectrum for Paxil) |
Always controversial Judge Richard A. Posner of the 7th Circuit sat as the district judge in this case. His outcome was preserved on appeal, but only after two of his holdings were reversed. This is a very well written, interesting opinion by Judge Rader. If you only read one every three-months, this should be it.
Simplification: The case involved PHC anhydrates (without water) and PHC hemihydrates (some water). In the 70’s PHC anhydrates were invented in the UK. In 1984, SKB invented PHC hemihydrates and eventually patented a PHC hemihydrate compound. (U.S. Patent No. 4,721,723) In 1998, Apotex filed an ANDA to market a prior art PHC anhydrate.
The holding is simple: 1) SKB’s clinical trials that occurred more than one year prior to filing are a public use under §102(b). The clinical trials were not a form of experimental use because the trials were experiments of the medical usefulness of the claimed compound (a PHC hemihydrate) and did not reflect upon the structure or ability to enable the claimed compound. 2) There is no room for a policy-driven inquiry during claim construction. Posner erred in adding a “commercially significant” limitation into the compound claim.
The most interesting aspect of Posner’s opinion was left for another day as moot. In his opinion, Posner created a new equitable defense to infringement that would bar enforcement of a patent when the patentee’s own conduct significantly inhibits non-infringing practice of the prior art. In this case, Apotex’s ANDA request involved making a prior-art PHC anhydrate. SKB argued that after 1984, the environment became seeded with hemihydrate crystals, and that it was no longer possible for Apotex to make PHC anhydrate that would be free of infringing hemihydrate. Under Posner’s new defense SKB would be estopped from enforcing its patent because its conduct (manufacturing hemihydrates and seeding the environment) had effectively eliminated Apotex’s ability to practice the prior art.
There is much more to this opinion including a thought provoking concurrence by Judge Gajarsa.
Read Part II, Part III, and part IV.
Here is a link to Judge Posner’s Opinion. (Thanks Howard Bashman)
Scanner Technologies Corp. v. ICOS Vision Systems Corp. (Fed. Cir. 2004)
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(Figure shows lens, mirrors, camera, ect.) |
In a standard claim construction case, the Federal Circuit vacated a grant of summary judgment in an infringement case involving technology for inspecting electronic components. (U.S. Patent No. 6,064,756 and 57). The lower court found that “comprising . . . an illuminating apparatus” was limited to a single apparatus, while the appellate court held that the phrase would include one or more.
Update: April 29, 2004. Although ICOS Vision Systems lost the appeal, their press release indicates that they may still have a good case.
Anton DeProft, president and chief executive officer of ICOS Vision Systems, commented, “We are disappointed with this decision, but note that the ruling was on a very narrow issue of claim construction, and involved a relatively limited number of systems we sold. We continue to believe that we do not infringe any valid patents of Scanner Technologies and intend to continue to vigorously defend our rights.”
GTE Mobilnet v. Cellexis International (D. Mass, April 20, 2004)
In a 1996 settlement agreement, plaintiff had agreed not to sue GTE or its subsidiaries, joint ventures or affiliates over disputed patent rights. In March 2000, plaintiff sued Bell Atlantic Mobile for infringement. At the time of the suit, Bell Atlantic Mobile was not an affiliate of GTE. However, four months later, through a series of transactions and transformations, Bell Atlantic Mobile became “Cellco” and an affiliate of GTE. After a trial, the Jury decided that Bell Atlantic Mobile (now Cellco) was an affiliate under the settlement agreement. Thus, the plaintiffs case was dismissed.
Commentary: This case simply involved contract interpretation. Drafting the settlement agreement with more clarity up-front could have avoided this litigation and its associated costs.
Fieldturf Int’l., Inc. v. Triexe Mgmt. Grp., Inc. (N.D. Ill. 2004)
An interesting case is brewing in the Northern District of Illinois between Fieldturf International and Triexe Management Group (Sportexe) over synthetic turf technology. (e.g., U.S. Patent 6,338,885). Fieldturf alleges that Triexe infringed its patents, intentionally interfered with its prospective economic advantage and committed common law conversion by selling or offering to sell synthetic turf to the U Wisc, UC Berkeley, the Baltimore Ravens, and a fourth project in Ireland. Triexe has denied the material allegations and has asserted counterclaims.
Prior litigation between the parties has involved domain name disputes stemming from Triexe’s registration of the domain name fieldturf.net. In his decision, the ICANN arbitrator found that Triexe’s registration was confusing and done in bad faith. In addition, Fieldturf recently lost an appeal in another patent infringement case for lack of standing. (Stephen Nipper).
Golden Blount, Inc. v. Robert H. Peterson Co. (Fed. Cir. 2004).
In an infringement action over a patented fireplace burner assembly, the district court, after a bench trial, found for the plaintiff patent holder. (U.S. Patent 5,988,159). A Federal Circuit panel vacated the infringement holding:
Because the district court’s sparse opinion provides this court with only bald conclusions for review, we conclude that the district court’s judgment as to literal infringement, contributory infringement, induced infringement, and infringement under the doctrine of equivalents is insufficient under Rule 52(a).
Additionally, the appellate court upheld a finding of validity. (Apparently, bald conclusions of validity satisfy Rule 52(a) because of the accompanied presumption of validity). Finally, the court refused to hear an inequitable conduct charge that had not been raised below.
Sierra Applied Sciences, Inc. v. Advanced Energy Ind. (AEI) (Fed. Cir. 2004)
Sierra designed and tested a power supply that arguably infringes AEI’s Patents. (E.g., U.S. Patent 6,001,224). Sierra filed a declaratory judgment action prior to putting its power supply on the market and conceded that it did not intend to sell the supply unless the Court determined invalidity or noninfringement in favor of Sierra. The court considered whether a sufficient case or controversy existed to support such a declaratory action.
AEI’s counsel, at oral arguments, represented that AEI would not sue Sierra for its current in-house use (for design or testing) of its power supply technology. The Court found that these representations created an estoppel against AEI in future suits and thus eliminated any case or controversy for the associated actions. In reference to a second power supply technology being developed by Sierra, the Court ruled that Sierra’s efforts at developing the device were not sufficiently far along “on the date of the complaint.” Reversed-in-part, vacated-in-part, affirmed-in-part, and remanded.
Geof has more on the case.
Commentary: Declaratory judgments actions require action by both the defendant (e.g., threaten suit) and the plaintiff (e.g., arguably infringing activity) in order to be appropriate. It is interesting that the Court examined the plaintiff’s actions up to the date of filing the complaint (Sierra being far from completing its new product as of filing) but examined the defendant’s actions that occurred much later (counsel conceding at oral arguments that AEI will not file suit for in-house uses).