Rader and Bryson spar over anticipation of method of use claims

PerriconeIIPerricone v. Medicis Pharmaceutical (Fed. Cir. 2005)

This case involved two patents (the ‘693 and the ‘063) on treating skin damage or disorders–particularly sunburn–by the application of ascorbyl fatty acid ester (vitamin C in a fat soluble form). On summary judgment, the district court determined that the asserted claims of both patents were invalid due to anticipation and double-patenting. On appeal, the CAFC affirmed the district court’s decisions in all respects but one: according to the majority, the district court erred when it determined that four claims to methods of treating “skin sunburn” by the application of ascorbyl fatty acid ester were anticipated by a prior art patent (“Pereira”) disclosing ascorbyl fatty acid ester as “suitable for topical application to the skin or hair.” Judge Rader wrote the opinion for the court, which Judge Linn joined, while Judge Bryson dissented.

Claim 1 of the ‘693 patent is representative of the “skin sunburn” claims at issue:

A method for treating skin sunburn comprising topically applying to the skin sunburn a fatty acid ester of ascorbic acid effective to solubilize in the lipid-rich layers of the skin an amount effective to scavenge therefrom free radicals present as a result of transfer of energy to the skin from the ultraviolet radiation which produced said sunburn.

Pereira disclosed cosmetic compositions for topical application, including the recited ascorbic acid composition, and identified the compositions as “suitable for topical application to the skin or hair.” The district court determined that Pereira anticipated Perricone because “Pereira will inherently function in [the claimed beneficial manner] when topically applied to the skin.”

According to Judge Rader, however, “The issue is not, as the dissent and the district court imply, whether Pereira’s lotion if applied to skin sunburn would inherently treat that damage, but whether Pereira discloses the application of its composition to skin sunburn. It does not.” Judge Rader continued: “Claim 1 of the ‘693 patent recites a new use of the composition disclosed by Pereira, i.e., the treatment of skin sunburn. The district court’s inherent anticipation analysis for this claim contains a flaw. The disclosed use of Pereira’s lotion, i.e., topical application, does not suggest application of Pereira’s lotion to skin sunburn. In other words, the district court’s inherency analysis goes astray because it assumes what Pereira neither disclosed nor rendered inherent.”

Judge Rader’s majority opinion distinguished claim 8 of the ‘693 patent, directed to a method for “preventing sunburn damage,” from claim 1, finding it anticipated by Pereira. According to Judge Rader, claim 8 “merely requires application of the composition to exposed skin surfaces. Because all skin surfaces are susceptible to sunburn damage, and because one can only realistically apply a composition to a skin surface when that surface is exposed, Pereira’s ‘topical application’ encompasses the application step of claim 8.”

Judge Bryson dissented, writing, “In my view, the differences between the claims that the court invalidates and those that it holds not to be invalid do not justify a difference in outcome.” Judge Bryson explained: “The majority seems to attach significance to the notion that topical application of Pereira’s emulsion always prevents sunburn, because all skin is subject to sunburn, but that it does not always treat sunburn, because not all skin is sunburned and in need of treatment. That distinction, however, does not stand up: the fact that the sunburn treatment function is pertinent to only a subset of users of the Pereira method (i.e., those already suffering from sunburn) does not mean that Pereira does not anticipate the treatment claims.”

The key point, according to Judge Bryson, was that the mechanism underlying both the prevention and treatment of sunburn by ascorbyl fatty acid ester is the same. According to Judge Bryson, “topical application of the Pereira composition to normal skin inherently produces the same chemical processes that underlie the sunburn prevention claims, including scavenging free-oxygen-containing radicals and neutralizing other reactive oxidants. Topical application of the Pereira composition to sunburned skin inherently produces the same processes, which also underlie the sunburn treatment claims.” Accordingly, in Judge Bryson’s view, “[t]o hold that the treatment claims of the sunburn patent are not anticipated by Pereira is to permit an inventor to secure patent rights to an existing invention merely upon identifying an inherent benefit of the prior art that had not previously been specifically identified, but that falls within a broader class of benefits already identified in the prior art.”

NOTE: This case review was written by a patent attorney (not me) who wishes to remain anonymous.


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Supreme Court: LabCorp Briefing Round I [UPDATED]

InfringingProducts008LabCorp v. Metabolite (on writ of certiorari).

This case involves a patented method of correlating a body protein level with a vitamin B deficiency.  (U.S. Patent No. 4,940658).  The claim in question (Claim 13) includes two steps: (1) assaying a body fluid for an elevated level of total homocysteine and (2) correlating an elevated level of total homocysteine with a folate deficiency. (paraphrased).

The patent holder won at trial and at the CAFC.  The defendant, Metabolite, then brought its case to the Supreme Court arguing that the patent is invalid because it “claim[s] a monopoly over a basic scientific relationship used in medical treatment such that any doctor necessarily infringes the patent merely by thinking about the relationship after looking at a test result.”

Interestingly, the question presented is not firmly grounded in any particular rule of patent law.  Rather, it implicitly raises issues of indefiniteness, enablement, written description, and patentable subject matter. (to name a few).  However, the Supreme Court has given some indication that it is most interested in this case because of the issue it raises regarding the patenting of natural phenomena under Diehr.

LabCorp has filed its brief on the merits as have a number of third parties:

Petitioner’s Brief  PDF (211 KB)

In Part I, Petitioner LabCorp’s stance is essentially that the law is correct, but that it has been misapplied in this case.

Claim 13 violates this Court’s longstanding rule barring patents on “laws of nature, natural phenomena, and abstract ideas.”

According to LabCorp, the claim involves “no actual invention beyond the scientific discovery it recites.”  The claimed correlation is a scientific principle or law of nature, and its discovery alone cannot be patentable.  The “trivial pre-solution” activity of assaying “cannot transform claim 13 into a patentable invention.”  Here, Petitioner never strays far from the precedential pillars of Diehr, Chakrabarty, Funk Bros., and Flook.

In Part II, LabCorp goes on to argue that the claim is neither definite, enabled, nor adequately described.  The Brief appears to ask the court to invalidate any claim that includes a “correlating” step unless the process of how to calculate a correlation is spelled out in the specification. 

The Federal Circuit relied on the accepted dictionary definition of “correlate” as meaning “to establish a mutual or reciprocal relationship between.” But nothing recited in the claim or disclosed in the specification tells a practitioner how to actively “establish” a “relationship” between a particular test result and a vitamin deficiency. At most, the Patent discloses that such a scientific relationship


More is required for a valid claim. . . .

In the remaining sections of the Brief, Petitioner argues that, on policy grounds, a very broad claim hinders scientific and technological progress and that the lower court judgment should be reversed.

Solicitor General’s Amicus Brief for the U.S. Government  PDF (165 KB)

The Solicitor General with assistance from the PTO’s counsel has filed its brief that falls closely in line with its prior unsuccessful brief in opposition to the petition for certiorari. 

In line with Petitioner, the Government agreed that the patent “appears to [impermissibly] claim all substantial practical applications of the natural relationship.” However, the Brief specifically states that this case should not be decided on an issue of whether a law of nature has been improperly claimed because the lower court record has not been developed on this issue. Directly addressing Petitioner’s part II, the Government argues that the specification does satisfy the requirements of 35 USC 112 “by describing, enabling, and claiming the method.”

Intellectual Property Owner’s Association (IPO) Brief  PDF (97 KB)

IPO realized that the question presented for review in this case does not directly challenge the current standards for patentable subject matter. However, the Supreme Court has indicated an interest in considering whether the patent-in-suit claimed patentable subject matter. 

IPO believes that the current standards for patentable subject matter, as set forth by the Court in

Diehr, correctly delineate between those innovations that should be eligible for patent protection and those that should not. Accordingly, IPO believes that this case should not serve as a vehicle for overturning or altering those standards. Rather, this case should reinforce the standards of Diehr and thus, support the expectation that innovations in yet unknown areas of technology will be eligible for patent protection.

Specifically, IPO argues that a broad scope of subject matter eligibility properly places research and development decision-making into the hands of individuals and private entities rather than in the judiciary. This “free market” approach “beset allocates research and development resources without judicial entanglement.”  The requirements of novelty, nonobviousness, and description protect against over-reaching patents and warrant against further restricting patentability based on subject matter.

* NOTE: I was a coauthor of the IPO brief along with Paul Berghoff and Joshua Rich from MBHB as counsel for IPO.  The IPO Board of Directors approved the Brief.

Affymetrix Brief PDF (104 KB)

Affymetrix is a supplier of commercial DNA microarrays and “has an interest in ensuring that patents not issue on basic laws of nature so as to impede scientific progress in analyzing DNA and gene expression.”  Affymetrix argues that the fact that “elevated levels of an amino acid in the blood correlated to a vitamin deficiency” is a natural phenomenon that leaves claim 13 unpatentable under current precedent.

Interestingly, Affymetrix argues that ambiguity of whether a claim impermissibly covers a natural phenomena should be resolved in favor of invalidity to avoid serious constitutional questions. (citing Feist).

Public Patent Foundation PDF (375 KB)

PubPat argues that the CAFC has gone astray by over-reaching the permissible bounds of patentable subject matter. (Citing Alappat and State Street). Rather, PubPat would have the Court return directly to Flook.

Reviews Coming:

Download Bear Stearns & Lehman Brothers Amicus Brief.PDF (3617 KB)

Download American Heart Association.PDF (3800 KB)

Download AARP.PDF (4033.7K)

Download AMA.pdf (2553.5K)

Download AMEX.pdf (527.0K)

Download AmerClin.pdf (3007.8K)

Download CCIA.PDF (2590.7K)

Download IBM.pdf (2283.3K)

Download NYCBLA.pdf (691.6K)

Download PatNotProf.pdf (999.6K)

Download PeoplMedSoc.pdf (3316.8K)

RIM Appeals to the Supreme Court

PatentlyOImage009 Research-In-Motion v. NTP (Supreme Court). [Updated 12/19/05]

The BlackBerry patent battle continues.  In a well written petition, RIM has requested that the Supreme Court hear its appeal from the Federal Circuit’s decision that that was decided in NTP’s favor in August, 2005.

The appeal involves the question of territoriality of the patent laws.  Specifically, RIM poses the following question to the Court:

Under § 271(a) of the Patent Act, “use” infringement is expressly limited to use of a patented invention “within the United States.” The question presented is: Whether an Internet-based global telecommunications system, such as the BlackBerry wireless email system, is used “within the United States,” where components crucial to the system’s operation are located outside the United States.

RIM, a Canadian company, maintains its routers in Canada and has argued that because a portion of its allegedly infringing system was outside of the US that it could not infringe a US patent.  NTP argued the other side — that the mere fact that some servers were located abroad (while many others were within the US) cannot let RIM escape judgment.  For its part, the Court of Appeals for the Federal Circuit split-the-baby and differentiated between system claims and method claims. 

  • For infringement of method claims, each and every step must be performed in the US.
  • For infringement of system claims, the US must be the place where control of the system is exercised adn beneficial use of the system obtained..

In the past two years, the Court has turned down at least two cases involving extraterritorial application of the patent laws.*  Perhaps setting the stage for certiorari here. (odds are still low).

More Info:

  • Download RIM’s Petition for Cert (PDF).
  • According to news reports, all five of NTP’s patents have received office action rejections at least once in the reexamination proceedings, and three of them have received two non-final rejections. [Link]
  • Crouch, BlackBerry Settlement Found Unenforceable, Patently-O: Patent Law Blog (November 30, 2005).
  • Crouch & Kafadar, Pushing The Boundaries, 176 Patent World 10 (October 2005) [Link]
  • * Pellegrini v. Analog Devices and Microsoft v. Eolas.

Patent Reform

Of course, Patent reform will continue in 2006.  In a recent four-page magazine style article, Professors Lemley (Stanford), Lichtman (Chicago), and Sampat (Columbia) present their proposal for patent reform.  The professors argue that we should not waste money worrying about the patent office doing poor examinations on unimportant patents.  Rather, they argue, we should focus on the inventions that are economically important.  Their proposals allow market participants to identify the important issues:

  • For standard examination, courts should have weakened or no presumption of validity;
  • Applicant can pay for “gold plated” examination which would then be given presumption of validity; and
  • Allow post-grant opposition for newly issued patents — opposer would fund a new examination.

Read the proposal here: What To Do About Bad Patents?

Patent Compulsory Licensing System II

eBay v. MercExchange

The upcoming MercExchange case is important, but it will not lead directory to a compulsory patent licenses on any large scale.  In this case, patentee MercExchange won its infringement suit against eBay, but was denied a permanent injunction. The district court gave four reasons for denying the injunction.

  1. General concern over the viability of business method patents;
  2. A strong likelihood of continuing disputes based on eBay workarounds;
  3. MercExchange’s willingness to license; and
  4. MercExchange’s failure to request a preliminary injunction.

Reviewing them in turn, the Federal Circuit panel dismissed each of these reasons — finding each unpersuasive.  Ultimately, finding that the defendant had shown “no reason to depart from the general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances.”

Now, this case has arrived at the Supreme Court to question this “general rule.” In the backdrop, the statute in question — 35 U.S.C § 283 — is written with the standard equitable language seemingly implying that injunctions are discretionary:

The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

It is unclear at this point what a damages calculation would be in a case where a permanent injunction is denied — probably most importantly is whether a patentee will be allowed treble damages for the ongoing infringement.

Court Finds Standing for Consumers to Bring Antitrust Claim of Asserting an Invalid Patent.

TAQMolecular Diagnostics Lab v Hoffman La Roche (D.D.C. 2005)

By S. Richard Carden

MDL, a purchaser of Thermus aquaticus DNA polymerase or “Taq” (a component used in performing polymerase chain reaction), brought suit against Roche, Applera and others for violations of the Sherman Act, allegedly arising from Roche’s enforcement of U.S. Patent No. 4,889,818 (“the ‘818 patent”) knowing that it had been procured through inequitable conduct.  The ‘818 patent claims a thermostable DNA polymerase isolated from the Thermus aquaticus bacteria.  Defendants moved to dismiss the complaint on several bases including (1) lack of standing, (2) tolling of the statute of limitations, (3) failure to sufficiently allege a conspiracy, and (4) failure to comply with the pleading requirements of Rule 9.  The D.C. District Court denied Defendants’ motion in its entirety, with a minor exception that precluded MDL from seeking damages for the period prior to the four year statute of limitations period prior to its filing of the suit.


Claim Construction: “A sodium phosphate” limited to one type of sodium phosphate.

Norian v. Stryker (Fed. Cir. 2005).

In the second claims construction appeal, the CAFC found that the term “a sodium phosphate” was limited to a single type of sodium phosphate.  In its decision, the Court found that if the patentee had intended to cover multiple types of sodium phosphate then it should have used “at least one” language.  This decision was supported by two factors: (1) the claim was amended to use the transition “consisting of” rather than the open ended “comprising” and (2) none of the listed examples in the specification used multiple types of sodium phosphate. 

Judgment of noninfringement affirmed.


EBay Arrives at Supreme Court: A Landmark Patent Case

MercExchangePatent_small1eBay v. MercExchange (on petition for certiorari).

The Supreme Court has agreed to review the question of “when it is appropriate to grant an injunction against a patent infringer” and will question the century-old precedent of Continental Paper Bag (1908).

The issues before the Court include:

  1. Whether the Federal Circuit erred in setting forth a general rule in patent cases that a district court must, absent exceptional circumstances, issue a permanent injunction after a finding of infringement. (Question proposed by eBay).
  2. Whether this Court should reconsider its precedents, including Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405 (1908), on when it is appropriate to grant an injunction against a patent infringer. (Question proposed by Supreme Court).

 In its petition for certiorari, eBay spells out the traditional four-factor test for injunctive relief and argues that the four-factor test should apply to patent cases rather than the de facto per se test applied by the CAFC.  The four-factor test includes consideration of:

  1. Irreparable harm from not issuing an injunction;
  2. Whether an adequate remedy exists in law (damages);
  3. Whether the injunction would be in the public interest; and
  4. Whether a balance of hardships would tip in the plaintiff’s favor. 

According to regarded patent law professor Joseph Miller, this certiorari decision is breathtaking. “If the Court writes narrowly, it will be the most important patent case since Chakrabarty or Diehr. If the Court writes broadly, it will be the most important patent case (perhaps even the most important patent or copyright case) in a century.”

An injunction in this case would not threaten eBay’s core business, but is directed to the “buy-it-now” feature of the online auctioneer.



BPAI: Mixing Subject Matter => Rejection

BacklashReductionEx parte Moore (BPAI 2005) (NOT PRECEDENTIAL)

In the wake of the CAFC’s recent IPXL v. Amazon opinion, the PTO’s Board of Patent Appeals has decided its own Section 101 case — rejecting a patent application based on its use of mixed use of method limitations and apparatus limitations in a single claim.

The statutory categories under 35 U.S.C. § 101 are expressed in the alternative, i.e., process, machine, manufacture or composition of matter. Thus, the appellants’ claim 24, which encompasses two statutory categories, i.e., apparatus and method, violates 35 U.S.C. § 101. See Ex parte Lyell, 17 USPQ2d 1548, 1551 (BPAI 1990).

Here, claim 24 was directed to a “backlash reduction apparatus” that comprised a number of components, and, in addition, required “the backlash reduction apparatus executing a method comprising: advancing a substrate . . .”

Interestingly, the Examiner did not raise this issue – rather, it was raised, apparently sua sponte, by the Board after the Examiner’s reasons for rejection were themselves rejected.



System Claim that Includes a Method Step is Invalid as Indefinite.

IPXLIPXL Holdings v. Amazon.com (Fed. Cir. 2005).

IPXL sued Amazon, arguing that its one-click purchasing system infringed on IPXL’s patent. Amazon won at trial and on appeal.

A portion of the opinion focuses on indefiniteness.  Specifically, the district court found that claim 25 was indefinite under 35 USC 112 because it attempts to claim both a system and a method for using that system.  Claim 25 reads as follows:

The system of claim 2 [including an input means] wherein the predicted transaction information comprises both a transaction type and transaction parameters associated with that transaction type, and the user uses the input means to either change the predicted transaction information or accept the displayed transaction type and transaction parameters.

On appeal, the panel set out the rule — that a “claim is considered indefinite if it does not reasonably apprise those skilled in the art of its scope.”  Regarding claims directed to both systems and methods, the panel agreed with prior BPAI decisions that “made it clear that reciting both an apparatus and a method of using that apparatus renders a claim indefinite.”

Here, the CAFC found that the claim was unclear whether it required only a system that allows the user to use the input means or instead required that the user actually use the input means. “Because claim 25 recites both a system and the method for using that system, it does not apprise a person of ordinary skill in the art of its scope, and it is invalid under section 112, paragraph 2.”


  • This is a very big decision and may lead to invalidation of many claims. A few potential examples:
    • A system for performing the method of claim 1.
    • A system comprising X and Y, wherein X operates at a high rate of speed.
    • The case does not mention product-by-process claims.
  • The analysis of indefiniteness here is quite different than the Court used in recently in Fisher-Price v. Graco.  There, indefiniteness required “severe” defects in the claims.
  • The court also denied Amazon’s claims for attorney fees because they were not filed in compliance with FRCP Rule 54(d)(2)(B). “[W]e hold that any claim to attorney fees must be processed in compliance with Rule 54(d)(2)(B). No provision in section 285 exempts requests for attorney fees thereunder from compliance with Rule 54(d)(2)(B).”
    • Rule 54(d)(2)(B): Unless otherwise provided by statute or order of the court, the motion [for costs and attorney fees] must be filed and served no later than 14 days after entry of judgment;  must specify the judgment and the statute, rule, or other grounds entitling the moving party to the award;  and must state the amount or provide a fair estimate of the amount sought.  If directed by the court, the motion shall also disclose the terms of any agreement with respect to fees to be paid for the services for which claim is made.
  • Opinion.


Under 102(g), Conception of Prior Art Requires Appreciation of Invention

Invitrogen Corp. v. Clontech Laboratories (Fed. Cir. 2005).

By Donald Zuhn, Ph.D. (Patently-O Guest Author).

In an appeal from a District Court judgment invalidating more than two hundred claims in three Invitrogen patents as being anticipated under § 102(g)(2), the Federal Circuit vacated and remanded, holding that the District Court misapplied the law of appreciation when determining the date of conception for researchers at Columbia University. The Federal Circuit, however, affirmed the District Court’s rulings on enablement, written description, and infringement.

The patents at issue relate to a genetically modified version of the enzyme reverse transcriptase, that has use in the field of molecular biology. Naturally-occurring (or unmodified) reverse transcriptase possesses both DNA polymerase and RNase H activities, the former permitting the enzyme to synthesize a DNA copy (cDNA) of a messenger RNA (mRNA) template, and the latter permitting the enzyme to degrade the mRNA template following cDNA synthesis. In contrast, the genetically modified enzyme lacks RNase H activity, and therefore, is unable to degrade the mRNA template following cDNA synthesis, allowing researchers to reuse the mRNA template to create additional cDNA copies..

While neither party disputed the District Court’s determination that Invitrogen had reduced a modified reverse transcriptase lacking RNase H activity to practice in January of 1987, Invitrogen did find fault with the lower court’s ruling that Drs. Stephen Goff and Naoko Tanese, two researchers at Columbia University, had conceived of such an enzyme before Invitrogen had reduced the enzyme to practice. Drs. Goff and Tanese had begun their work in 1984 by preparing a panel of bacterial mutants having modified reverse transcriptase genes. The panel included two mutants that the Columbia University researchers would later show possess modified reverse transcriptase lacking RNase H activity. However, due to limitations in the assays that Drs. Goff and Tanese were using to measure RNase H activity, they were unable to conclusively establish that any of the mutants possessed modified reverse transcriptase lacking RNase H activity at the time the mutant panel was prepared. In March of 1987, Drs. Goff and Tanese used a new assay that they had developed to finally establish that two of the mutants from their panel possessed the modified enzyme. They were also able to correlate the results obtained with their new assay with their late 1986 sequencing analysis of the mutants.

Following a series of pre-trial motions regarding the issues of conception, enablement, written description, and infringement, the District Court determined, inter alia, that Drs. Goff and Tanese (a) had conceived of a genetically modified reverse transcriptase lacking RNase H activity either in December of 1984 when they had isolated mutants possessing modified reverse transcriptase, or in January of 1986 when they had sequenced the reverse transcriptase genes in these mutants; (b) had actually reduced their invention to practice in March of 1987 when they established that two mutants from their panel possessed modified reverse transcriptase; and (c) were diligent in reducing their invention to practice, and did not abandon, conceal, or suppress it. However, despite these rulings, the District Court refused to find that the work of Drs. Goff and Tanese anticipated Invitrogen’s patents under § 102(g)(2), arguing that anticipation posed factual questions requiring resolution on a claim by claim basis.

Stating that conception “require[s] more than unrecognized accidental creation,” and instead “requires that the inventor appreciate that which he has invented,” the Federal Circuit found that the District Court erred by establishing Drs. Goff and Tanese’s conception before January of 1987 and granting partial summary judgment for Clontech. Relying on decisions of its predecessor Court, which “require some connection between the physical result (the invention) and the belief (by the inventor),” the Federal Circuit determined that the record was inconsistent with the District Court’s notion that Drs. Goff and Tanese set out to create a modified reverse transcriptase or appreciated in 1984 that their mutant panel contained two mutants possessing modified reverse transcriptase. Rather, the Federal Circuit believed that this case “fit[] squarely within the unrecognized, accidental duplication cases.”

However, while the Federal Circuit determined that the evidence excluded both dates of conception proposed by the District Court, the Federal Circuit also found that Dr. Goff’s deposition testimony precluded it from finding that the District Court abused its discretion in refusing to grant partial summary judgment for Invitrogen on the issue of conception. In particular, Dr. Goff had testified that he had formed a suspicion in late 1986, based on his difficulties analyzing the mutants, that two of the mutants possessed modified reverse transcriptase lacking RNase H activity. Because a reasonable fact-finder presented with Dr. Goff’s testimony could conclude that the evidence preceding the researchers’ March 1987 testing might suffice, under the applicable standard, to corroborate Dr. Goff’s suspicions about the two mutants, the Federal Circuit vacated the District Court’s invalidity judgment and remanded the case for further proceedings.

NOTE: This post was written by patent attorney Donald Zuhn, PhD. Don is a true expert in cutting edge biotech patent law and practices both litigation and prosecution at MBHB LLP in Chicago. (zuhn@mbhb.com).

Phillips v. AWH: Case Petitioned to Supreme Court

Phillips v. AWHPhillips v. AWH (on petition for certiorari)

AWH has petitioned the Supreme Court to take-up this landmark case with the broad question of whether patent claims should be reviewed de novo on appeal.

Question Presented: Whether the Federal Circuit is correct in holding that all aspects of a district court’s patent claim construction may be reviewed de novo on appeal.

This petition picks up where Judge Mayer and Newman’s dissent left off in the en banc Phillips decision. In their dissent, the judges focused their attention on the “futility [and] absurdity” of the de novo rule.  

Now more than ever I am convinced of the futility, indeed the absurdity, of this court’s persistence in adhering to the falsehood that claim construction is a matter of law devoid of any factual component. Because any attempt to fashion a coherent standard under this regime is pointless, as illustrated by our many failed attempts to do so, I dissent.

Indeed, many believe that the high reversal rate of claim construction is primarily due to the de novo standard.  To that effect, AWH’s petition does not mince words:

Left to its own devices, the Federal Circuit will continue to improperly devote the chief measure of its energy to rejudging the facts of patent claim constructions, rather than to fulfilling its purpose of bringing uniformity to patent law.

A Phillips reply brief will be due shortly.


CAFC: Claim implied at least two styles.

MicrostrategyMicrostrategy v. Business Objects (Fed. Cir. 2005)

These companies make business intelligence software.  Microstrategy filed suit against Business Objects alleging both patent infringement and several business tort claims.  The patent at issue involved automatic broadcasting of information to multiple types of subscriber devices and then formatting the output.

Patent Claims: After a Markman hearing, the defendant, Business Objects, was granted summary judgment of non-infringement. On appeal, Microstrategy did not fight the claim construction, but rather the interpretation and application of the claim construction.  The question was whether the claim language of “each user output device . . . be associated with a device-specific style” required at least two different styles.

MicroStrategy argues that this Markman construction and the context of the invention do not require support for more than one type of output device. In particular, MicroStrategy notes that the specification contemplates a system with “one or more” output devices. Thus, MicroStrategy reads the claim and the district court’s Markman construction to permit a system with support for just one type of user device.

The CAFC, disagreed. Because the claim required that “each user output device . . . be associated with a device-specific style,” the Court determined that the claim implicitly required at least two different styles.  Because the defendant only supported one style, the non-infringement decision was affirmed.

The Appellate panel did, however, reverse the lower court’s findings regarding one of the business tort claims under Virginia law.

Court invalidates more Lemelson claims

Symbol Tech. v. Lemelson (Fed. Cir. 2005) (order).

In a recent decision, the Federal Circuit affirmed a finding that Lemelson’s patents were unenforceable due to prosecution laches. Lemelson filed a petition for rehearing.  In an order based on that petition, the CAFC declined the opportunity to rehear the case except by further punishing the long-time patent holder.

Although the district court did not make its resolution of the laches issue applicable to the remaining claims, holding that the question would be decided only if it later became necessary to do so, in our view, the more appropriate course of action is to apply the laches holding to all of the claims in the 14 asserted patents. Lemelson does not provide any persuasive reason why that should not be so.


Bush Administration Intercedes in BlackBerry Patent Case

NTP v. Research-in-Motion (Fed.Cir. 2005)

In this ongoing patent infringement case involving the Canadian RIM’s BlackBerry system, the U.S. Government has submitted a brief to District Court Judge Spencer.  The brief notes that under Trojan v. Shat-R-Shield, the Federal Government cannot be enjoined against using a patented invention and thus, asks the court to fashion any injunction in such a way to continue to allow the U.S. Government workers to continue to use the BlackBerry.

According to the Government brief, at this point, RIM has no way to distinguish between U.S. Government users and private users. Thus, the Government proposes the following options:

  1. Require RIM to create a whitelist of U.S. Government devices and users
  2. The Government is in the process of determining how long it would take to provide user names and information to RIM, and thus asked for a 90 day stay in the proceedings to determine whether they believe an injunction would implicate other public interests.

Chief Judge James R. Spencer is a Reagan appointee and Harvard Law graduate.

Other tidbits:

2nd Circuit Approves Patentee-Generic Reverse Payments

InfringingProducts013In re: Tamoxifen Citrate Antitrust Litigation (2nd Cir. 2005).

Just in time for the Supreme Court’s decision on certiorari in FTC v. Schering-Plough, the Second Circuit court of appeals has released its decision in the Tamoxifen Citrate case — finding that reverse payments to a generic manufacturer were not sufficient to show a per se violations of the antitrust laws.  In addition, the Court went on to hold that even “excessive reverse payments” might not be unlawful.  The Court did recognize the suspicious nature of reverse payments.

There is something on the face of it that does seem “suspicious” about a patent holder settling patent litigation against a potential generic manufacturer by paying that manufacturer more than either party anticipates the manufacturer would earn by winning the lawsuit and entering the newly competitive market in competition with the patent holder. Why, after all — viewing the settlement through an antitrust lens — should the potential competitor be permitted to receive such a windfall at the ultimate expense of drug purchasers? We think, however, that the suspicion abates upon reflection. In such a case, so long as the patent litigation is neither a sham nor otherwise baseless, the patent holder is seeking to arrive at a settlement in order to protect that to which it is presumably entitled: a lawful monopoly over the manufacture and distribution of the patented product.

Dismissal affirmed.

In dissent, Judge Pooler argued the antitrust analysis can be applied to settlements concerning patented products.

The requirement that—unless an antitrust plaintiff demonstrates that a settlement agreement exceeds the scope of the patent—it must show that the settled litigation was a sham, i.e., objectively baseless, before the settlement can be considered an antitrust violation is not soundly grounded in Supreme Court precedent and is insufficiently protective of the consumer interests safeguarded by the Hatch-Waxman Act and the antitrust laws.


CAFC: Court’s Summary Judgment of Noninfringement “Invaded the Province of the Fact Finder”

InfringingProducts011Dorel v. Graco (Fed. Cir. 2005).

Dorel sued Graco for infringement of its patents on child car seats with retractable cup holders. Graco won its motion for summary judgment of non-infringement based on the argument that its seats did not include a seat “removably secured to the base.”  The court reasoned that the seat could not be removably secured to the base because there was no separate base.

On appeal, the CAFC reversed, finding that the district court had “invaded the province of the finder of fact . . . in deciding the infringement question.”  Here, the CAFC determined that a question of fact existed because as to whether there was a separate base because the seat portion of Graco’s product could easily be separated (with a screwdriver) into a top and bottom portion that could be termed a seat and a base respectively.


In dissent, Judge Newman took issue the majority’s factual analysis — arguing that no reasonable jurist could find that the base was “removable.”

The Graco carseat is a permanent assembly whose molded parts are permanently screwed together with six “one-way” screws. Upon unscrewing and disassembly, the Graco seat becomes a collection of loose parts, the cup holder incapable of its function of supporting a cup. . . . Removal of the top part of the Graco carseat (for example, to carry the infant into grandma’s house), would require removing the upholstery, upending the carseat (requiring removal of the entire assembly from its crash-proof installation), and removing the six unremovable screws with the special tool needed for removing unremovable screws — and then repeating the operation in reverse upon returning to the car with the top part and its infant cargo. The panel majority’s redefinition of the patented invention to cover such a carseat is devoid of support.



CAFC: Indefiniteness Requires “Severe” Defects in the Claims

InfringingProducts010Fisher-Price v. Graco (Fed. Cir. 2005) (NOT PRECEDENT).

Fisher-Price holds a patent on a collapsible infant swing and sued Graco for infringement. The primary asserted claim reads as follows:

6. An infant swing comprising:
   an upward extending frame support post;
   a swing arm pivotally coupled to an upper end of said frame support post and extending in a downward direction from said upper end of said frame support post;
   a seat coupled to said swing arm and having an upper seating surface;
   said swing arm and said frame support post defining a reconfigurable swing area there between;
   a shield coupled to said seat and extending upwardly from said seat and disposed between said reconfigurable swing area and said seating area.

After a Markman hearing, the district court found several limitations of the claim indefinite (italicized) and thus invalid.

On appeal, the CAFC explained that a defect in a claim must be “severe” before it will be invalidated as indefinite. Here, the CAFC reversed because the “patent is not complex; it is readily understood by both the expert and layperson [and] the words used in the limitation are simple, with well-known ordinary meanings [that] can be construed without great difficulty, even if, as Graco points out, it is not mentioned in the specification.”

Finally, regarding “said seating area,” Graco argued that the term was indefinite because it had no antecedent basis in the claim.  Although not rejecting the legal basis of this argument, the CAFC found an implied antecedent basis in the term “upper seating surface.” 

CAFC reverses jury finding of invalidity and noninfringement.

InfringingProducts009Callicrate v. Wadsworth (Fed. Cir. 2005).

Callicrate sued Wadsworth for infringement of its patented bull castration tools. After a trial, a jury found all of the claims anticipated, obvious, and not infringed.  On appeal, the CAFC disregarded the jury verdict and reversed.

Infringement:  The defendant admitted that its devices include all of the claim elements. Based on that admission, the CAFC determined that the jury had “no basis” for finding no infringement and that there is “no reason for a new trial.”  (Although each element was included, the defendant argued that the components were “not connected in the particular manner recited in the claims.  The CAFC does not seem to have addressed that point specifically since the jury instructions asked simply whether “each and every element” of the claim was included).

Enabling Disclosure: Callicarate’s patent claim priority to an earlier patent, but could be invalidated if they were shown to be not fully enabled by the earlier patent.  The district court found that the earlier patent did not contain adequate disclosure to support the claimed mechanism because (1) the only disclosure of the claimed mechanism is in the background section of the earlier patent; (2) the background section contains disparaging remarks about this mechanism; and (3) the patentee distinguished his assembly mechanism from the claimed mechanism during prosecution.

However, the CAFC held that these reasons were insufficient for a finding of a lack of enablement.  First, the background section can be used to enable a claim. Second, disparaging remarks do not make it any less likely that one of ordinary skill in the art would, after reading the background, know how to make and use the invention.

Defendant Challenging Claim Construction: In a cross-appeal, the defendant challenged certain claim construction terms.  However, the CAFC refused to hear that appeal because the defendant had not objected to the district court’s construction and had conceded infringement of the newly challenged element. (note: the CAFC has finally drawn a line for when it will not review claim construction).

Conclusion: Reversed and remanded because jury verdict was against the weight of the evidence.