Tag Archives: Claim Construction

Federal Circuit gives Paint-Roller Patentee Chance for a Second Coat

Patent, Patent Cases 2004

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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 Cir. 2004) (NONPRECEDENTIAL)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.

Reversed and remanded.

NOVARTIS v. ABBOTT (JMOL of noninfringement of Novartis patents affirmed)

Patent, Patent Cases 2004

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NOVARTIS PHARMACEUTICALS CORPORATION v. ABBOTT LABORATORIES (Fed. Cir. July 8, 2004).

Novartis brought a patent infringement suit against Abbott based on its patented cyclosporin compositions. (U.S. Patent 6,007,840). A jury determined that Abbott infringed claim 81 of the ‘840 patent. However, the district court issued a judgment as a matter of law (JMOL) of noninfringement in Abbott’s favor.

On appeal, the appellate panel found that the district court’s claim construction was erroneous, but that those errors were harmless to the JMOL decision. Affirmed.

In dissent, J. BRYSON argued that the court unduly applied the the specific exclusion principle to narrowly construe the term “lipophilic component.”

The statement on which the court relies refers to the role performed by excess amounts of the substance that serves the role of the surfactant in the claimed composition. The quoted language indicates that the composition of the invention must have at least three components in addition to the cyclosporin, as required by claim 81. In addition, it contemplates that the substance that serves as the surfactant may also serve as part of either the hydrophilic or the lipophilic component. The quoted language therefore makes clear that the composition may not consist of only two components in addition to the cyclosporin, as would be the case if one ingredient served as both the surfactant and the lipophilic component in the composition. However, the quoted language does not address the case presented by Abbott’s composition, which contains three components in addition to the cyclosporin, and in which a hydrophilic surfactant serves as the surfactant, while Span 80 serves the function of the lipophilic component (dissolving and carrying the cyclosporin). Thus, because in Abbott’s composition Span 80 does not serve as the surfactant referred to in claim 81, the quoted language from the specification does not apply to Abbott’s composition. For that reason, I agree with Novartis that, where another substance serves as the hydrophilic surfactant, the specification does not disclaim the use of a lipophilic surfactant such as Span 80 as the sole component of the lipophilic component of the claimed invention. I therefore do not find a disclaimer of subject matter in the specification. A fortiori, I do not find a specific exclusion of subject matter for purposes of the doctrine of equivalents.

SEARFOSS v. PIONEER

Patent, Patent Cases 2004

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SEARFOSS v. PIONEER CONSOLIDATED CORPORATION (Fed. Cir. June 6, 2004)

Searfoss appealed the district court’s claim construction and resulting summary judgment of non-infringement of its patented truck bed covers. (U.S. Patent 5,031,955).

Because a finding of infringement under the doctrine of equivalents would vitiate the requirement of a direct connection through an actuation means, no reasonable jury could find that the accused device is insubstantially different than the claimed invention. Summary judgment of non-infringement is thus appropriate.

Because the district court correctly construed the disputed claim terms of the ’955 patent and thus Pioneer did not infringe claim 3 under the doctrine of equivalents, the district court’s entry of summary judgment on non-infringement is AFFIRMED

TI Group Automotive Systems v. VDO

Patent, Patent Cases 2004

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TI Group Automotive Systems v. VDO (Fed. Cir. June 30, 2004) [PDF].

TI Group is an automotive supplier that makes fuel tanks, fuel pump assemblies, and complete fuel tank systems. (U.S. Patent 4,860,714). TI Group has sold over thirty million fuel pump assemblies that embody the ’714 patent. VDO began selling an assembly that “were essentially drop-in replacements.”

After a jury verdict of willful infringement, the district court granted a JMOL in VDO’s favor based on non-infringement but denied VDO’s JMOL motion for invalidity.

Because we affirm some of the district court’s claim constructions, and because as to those limitations TI Group points to no evidence supporting the jury’s finding of infringement, we affirm the district court’s grant of VDO’s JMOL motion with respect to infringement. However, because we have broadened a number of the district court’s claim constructions, thus affecting the invalidity analysis, we vacate the district court’s denial of VDO’s JMOL motion with respect to invalidity and remand that issue for further proceedings consistent with this opinion.

Patent Infringement: No summary judgment of anticipation based on prepared model

Patent, Patent Cases 2004,

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NYSTROM v. TREX Co. (Fed. Cir. June 28, 2004).

In an appeal of a summary judgment in a patent infringement case involving specially manufactured boards for decking, the Federal Circuit reversed and remanded. (US Patent 5,474,831).

Because the district court erred in its constructions of the claim terms “board,” “manufactured to have,” and “convex top surface,” the district court’s grant of summary judgment of non-infringement of claims 1-15 of the ’831 patent is reversed.

The panel also reversed the district court’s judgment of invalidity.

The district court’s acceptance of TREX’s invalidity arguments based on models made from drawings contained in the Zagelmeyer patent was incorrect. The basis of the district court’s summary judgment of invalidity was a model that TREX developed based on that reference, and not on drawing dimensions or a written disclosure of dimensions contained directly in the patent itself. Under the principles set forth in our prior cases, the speculative modeling premised on unstated assumptions in prior art patent drawings cannot be the basis for challenging the validity of claims reciting specific dimensions not disclosed directly in such prior art. Thus, we conclude that the district court erred in granting summary judgment of invalidity based on TREX’s models.

In dissent, Judge Gajarsa found that the term “board” should be limited to wooden boards.

ProstaScint (R) Patent Noninfringement Holding Reversed

Articles and Publications, Patent

Goldenberg and Immunomedics, Inc v. Cytogen, Inc. and C.R. Bard, Inc. (Fed. Cir. June 23, 2004)

(GAJARSA) In an appeal of a summary judgment of noninfringement, the Federal Circuit upheld the district court’s claim construction and summary judgment of no literal infringement. However, the appellate panel reversed the lower court’s summary judgment of noninfringement based on the doctrine of equivalents (DOE).

The patent at suit issued in 1984 and involved tumor localization and antigen therapy. (U.S. Patent 4,460,559). Cytogen and Bard’s ProstaScint (R) products (used to image the extent and location of prostate cancer) allegedly infringe this and other patents held by the plaintiffs.

Holding:

Summary judgment of noninfringement under the doctrine of equivalents is appropriate if “no reasonable jury could determine two elements to be equivalent.”

The district court explained that, under Dey, statements from the ’744 patent could not create prosecution history estoppel for the ’559 patent. For the same reasons stated above, we agree with the district court’s conclusion on this point. Despite the lack of estoppel, however, the district court still found that Immunomedics “had not met the requirements of the ‘function-way-result’ test.”

The district court appears to have viewed the world of antigens as consisting of two distinct categories—those that are intracellular and those that are on the cell surface—and concluded that antigens falling in different halves could not be equivalents as a matter of law. Transmembrane antigens, however, appear to be a category of their own, and are not susceptible to the black and white categorization made by the district court. As a “grey” category, transmembrane antigens are not addressed by the ’559 patent or its prosecution history and might be equivalents to either of the categories identified by the district court if such a finding was made. See generally Warner-Jenkinson, 520 U.S. at 40.Thus, the court remanded for further proceedings.

In dissent, J PROST would have allowed the claim term “intracellular marker substance” to encompass portions of an antigen located inside a cell.

Linear Technology v. Impala Linear (Patent Claim Construction)

Patent, Patent Cases 2004

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Linear Technology Corporation v. Impala Linear Corp., Toyoda Automatic Loom Works, Maxim Integrated Protduct, Unitrode Corp., and Ronald Vinsant (Fed. Cir. June 17, 2004).

After losing a summary judgment in an infringement suit, Linear mounted this appeal based on claim construction and other errors. The technology at suit related to voltage regulators designed to provide constant voltage output from a fluctuating input. (U.S. Patent 5,481,178).

Because the district court erred in construing the “circuit,” “vary the duty cycle,” and “simultaneously off” claim limitations of the ’178 patent, we vacate the judgment of non-infringement and remand for further consideration. We further vacate the district court’s summary judgment of no contributory infringement or inducement of the current reversal method claims of the ’178 patent, because genuine issues of material fact have been raised concerning Maxim’s contributory infringement or inducement. Because the district court did not abuse its discretion on Maxim’s cross-appeal in denying Maxim’s motion for summary judgment that Vinsant was a joint inventor of the ’178 patent, we affirm.

The appellate panel held that the district court had improperly found that the term “circuit” was a means-plus-function limitation and that the district court had failed to apply the “rebuttable presumption that § 112 6 does not apply.”

We hold that because the term “circuit” is used in each of the disputed limitations of claims 1, 44, 55, and 57 of the ’178 patent with a recitation of the respective circuit’s operation in sufficient detail to suggest structure to persons of ordinary skill in the art, the “circuit” and “circuitry” limitations of such claims are not means-plus-function limitations subject to 35 U.S.C. § 112 6. The district court’s holding to the contrary was an error of law.

The appellate panel also found error in the district court’s exclusion of PWM circuits from other means language in the claims.

Linear cites technical textbooks and electronic parts catalogs indicating that PWM circuits are well-known circuit structures to persons of skill in the art. Thus, we conclude that the district court erred in excluding PWM circuits.

…

Metabolite Labs. v. LabCorp

Patent, Patent Cases 2004

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Metabolite Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings (doing business as LabCorp) (Fed. Cir. June 8, 2004)

The Federal Circuit (J. Rader) affirmed the jury verdict of indirect infringement and breach of contract, and affirmed the district court’s award of over $8 million in damages to Metabolite (including damages for willfulness).

As expected, the appellate court ruled that the same claim construction should be used for damage calculations as is used for infringement and validity analysis.

This court declines the invitation to apply a different claim construction for computation of damages than for infringement liability.

Additionally, the court refused to vacate the willfullness damages even though the district court did not examine any of the Read factors in its decision.

That the district court did not explicitly set forth its rationale for awarding Metabolite enhanced damages based on LabCorp’s willful indirect infringement is not fatal to its decision…. The district court’s failure to discuss the Read factors, although contrary to this court’s strong preference for the enumerated bases underlying its decision, in this case was at most harmless error.

Finally, the Appellate Panel held that no justification for a permanent injunction is required once infringement is found.

[T]he district court properly granted the injunction because LabCorp was found to infringe. See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 842 F.2d 1275, 1281 (Fed. Cir. 1988) (“[A]n injunction should issue once infringement has been established unless there is a sufficient reason for denying it.”).

W.E. Hall v. Atlanta Corrugating

Patent, Patent Cases 2004,

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W.E. Hall Company, Inc. v. Atlanta Corrugating, LLC (Fed. Cir. June 7, 2004)

In a patent infringement suit, the Federal Circuit affirmed the lower court’s claim construction and noninfringement summary judgment. (U.S. Patent 4,838,317, on a Hydraulically Efficient Ribbed Pipe)

Appellant argued that ambiguity in the written description and prosecution history warranted a special meaning for several contested terms. The court disagreed:

Where, as here, the written description and prosecution history are ambiguous as to whether the patentee used the claim terms inconsistent with their ordinary and customary meanings, it is the ordinary and customary meanings that the terms obtain.

In re American Academy of Science Tech Center

Patent, Patent Cases 2004,

In re American Academy of Science Tech Center (Fed. Cir. May 13, 2004)
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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.

Housey v. Astrazeneca (Fed. Cir. 2004)

Patent, Patent Cases 2004,

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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.

Vanderlande Industries v. ITC (Fed. Cir. 2004)

Patent, Patent Cases 2004

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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.

Smithkline Beecham v. Apotex (Paxil)

Patent, Patent Cases 2004,

Smithkline Beecham Corp. (SKB) v. Apotex Corp. (Fed. Cir. 2004)

(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 v. ICOS Vision Systems

Patent, Patent Cases 2004

Scanner Technologies Corp. v. ICOS Vision Systems Corp. (Fed. Cir. 2004)

(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.”

Snippets

Articles and Publications, Patent,

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SnippetsTM provides a review of timely developments in intellectual property law. Here is a table of contents of the most recent issue (April 2004):

1. Anthoula Pomrening, Drafting the Technology Game Plan, Part 4: Effective Trademark Searching
2. Blair Hughes, The New Statutory Interference Bar: Should you Monitor Competitors’ Published Patents?
3. Alison Baldwin, Patent Validity Assessments: Your Guide to Avoiding the On-Sale Bar
4. Michael Greenfield and Jennifer Swartz, Claim Construction 101: Unlocking the Meaning of Preambles
5. Brian Harris, Caveat Sender: What Else is Attached to Your E-Mail?

Those interested can request a pdf version of the publication by emailing your contact info to the editor.