Tag Archives: Claim Construction

Claimed ‘plant cell’ must enable monocots and dicots; CAFC affirms noninfringement and invalidity of Monsanto GM corn patents

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Monsanto Co. v. Syngenta Seeds, Inc. (Fed. Cir. 2007)

Monsanto and its Dekalb subsidiary hold three patents covering Roundup-Ready Corn.

  • 4,940,835 covers a GM gene that confers glyphosate resistance to plants.
  • 5,538,880 covers the process of producing herbicide and insect resistant corn.
  • 6,013,863 covers the process of producing glyphosate resistant corn having a marker gene.

Syngenta grew Dekalb GM seeds that had been produced according to the patented methods and then grew genetically identical progeny exhibiting the same GM traits. 

In the ensuing infringement litigation, the district court held that the ‘835 patent invalid for under 35 USC 112 for lack of enablement and held that Syngenta did not infringe the two process patents because the accused infringer did not perform the initial step of the claims. (That initial step of “bombarding … cells with DNA-coated microprojectiles” was performed by Bayer prior to issuance of the patents).

Enablement: The ‘835 patent is not limited to corn. Rather, it claims to be applicable to ‘plant cells.’ During claim construction, the district court found that the patent scope extended to all plant cells – including both monocots and dicots. However, the ‘835 patent was filed before genetic transformation of monocot cells was possible.

“The claim requires transformation of the plant cell. Without the ability to transform a monocot cell, one skilled in the art could not determine whether the plant gene could carry out the claimed functions and thus fall within the scope of the claim.”

Thus, the ‘835 patent is invalid for lack of enablement.

Infringement of Dependent Process Claims: Generally, a dependent claim includes all the limitations of its parent.  Here, however, Monsanto argues that its process claim structure necessitates an alternative viewpoint.  In particular, Monsanto argued in the alternative that its Claim 4 is (1) not a dependent and (2) even if a dependent does not require all the limitations of Claim 1. The process claims line-up as follows:

  • Claim 1: A process for producing a fertile transgenic Zea mays plant comprising the steps of …
  • Claim 4: A process comprising obtaining progeny from a fertile transgenic plant obtained by the process of claim 1 which comprise said DNA.

Thus, Claim 4 is directed to a process of growing seeds from a plant that was produced according to the manner of claim 1.  This could be considered a claim directed to a process of using a product of a process.

The CAFC quickly shot-down Monsanto’s argument — holding that claim 4 is a dependent and the all element rule applies.

“Although in a somewhat unusual format, claim 4 is dependent from claim 1 because it only stands if all three steps recited in claim 1 have been performed. In other words, the additional fourth step of obtaining progeny depends on the performance of the process comprising the three steps recited in claim 1 for obtaining a fertile transgenic plant. Claim 4 contains each element of a dependent claim.”

The court also repeated its rule that one “cannot infringe” a dependent claim without also infringing the parent claim.

271(g) Infringement: Under 271(g), a product made by a patented process also creates infringement liability.  Here, however, Syngenta could not be held liable because several steps of the process were performed prior to issuance of the patent.

“Infringement is not possible under § 271(g) when the three first steps of the claimed process are performed before the issuance of the patent.”

Summary judgment of noninfringement and invalidity affirmed.

 

 

PTO Claim Construction: “Flexible Foam” Is Not “Rigid Foam That Is Flexible When Crushed”

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In re Buszard (Fed. Cir. 2007)

The Buszard application is directed to a flame retardant composition that includes a flexible polyurethane foam base. The PTO Patent Appeal Board rejected Buszard’s patent application as anticipated by a prior patent.

On appeal, the CAFC reversed — Judge Newman penned the opinion that focused on the PTO’s practice of giving claims their ‘broadest reasonable interpretation.’

“Buszard’s specification and claims specifically state the requirement of a flexible polyurethane foam…. No matter how broadly “flexible foam…” is construed, it is not a rigid foam…. The [cited prior art] reference describes only a rigid foam reaction mixture that produces a rigid product. Only by mechanically crushing the rigid product into small particles is it rendered flexible, as a rock can be mechanically crushed to produce particles of sand. This description cannot reasonably be construed to describe, and thus to “anticipate,” the flexible foam product of a flexible foam reaction mixture. We agree with Buszard that it is not a reasonable claim interpretation to equate “flexible” with “rigid,” or to equate a crushed rigid polyurethane foam with a flexible polyurethane foam.”

Interestingly, Judge Newman’s claim construction intertwines analysis of the claim language with analysis of the scope of prior art disclosure.  Although the PTO may give an applicant’s claims broad interpretation — the scope of the prior art cannot extend beyond its disclosure.

Judge Prost dissented. In Prost’s view, any ambiguities in patent claim terms should be construed against the patentee during prosecution of the patent. That approach avoids the usual ‘guessing game’ of Phillips-style claim construction and it is quite easy for an applicant to make clarifying amendments to claim language.  

Continued Patent Trouble for Vonage

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Verizon v. Vonage (Fed. Cir. 2007)

Judge Dyk wrote the majority opinion. Each of the five substantive sections of the opinion garnered two votes. Chief Judge Michel joined Parts I and V while Judge Gajarsa joined Parts II-IV. Both Judges Michel and Gajarsa filed additional dissenting opinions.

Earlier in 2007, Vonage was found to infringe three of Verizon’s IP Telephony patents. The verdict awarded $58M in damages along with an ongoing 5.5% royalty rate and an injunction against further infringement.

On appeal, the CAFC affirmed that two of the patents were valid and infringed and that an injunction had been properly granted. As to the third patent (the ‘880 patent), the CAFC vacated and remanded after finding claim construction errors, potential errors in application of the obviousness doctrine under KSR, and errors in determining injunctive relief under eBay. The damage award was also vacated because the jury verdict did not apportion damages according to the various patents.

Thus, Vonage still infringes, but perhaps not as severely. It is unclear at this point whether avoiding infringement of one patent helps Vonage in any substantive way…

Chief Judge Michel would have affirmed across the board. And, interestingly, he would not have disturbed the $58M damage award even though one of the three patents was not infringed.

“When, as here, the evidence shows that each of the accused products infringes all of the patents-in-suit, and the infringer fails to make any showing on appeal that the damages award would not be supported by only those patents for which we affirm liability, we must affirm the damages despite our reversal of part of the infringer’s liability.”

Judge Gajarsa found claim construction errors in one other Verizon patent, but could not convince a colleague.

============

Sprint v. Vonage (E.D.Kan. 2007) On September 25, a Kansas City jury found that Vonage also infringes a patent held by Sprint Nextel — tacking on another 5% in royalty revenue. [LINK].

Notes:

Warner Lambert’s Neurontin Patent May Be Infringed

Patent

PatentLawPic040In re Gabapentin Patent Litigation (Fed. Cir. 2007)

Warner Lambert sells its drug gabapentin under the trade name Neurontin to treat epilepsy and as well as post-shingle nerve pain. The related patent covers a method of making gabapentin that is stable enough to work well for pharmaceutical use.  Using tools of the Hatch-Waxman Act, Warner Lambert filed this patent litigation to keep generic versions of the drug off the market.  After years of litigation, the district court granted the generic manufacturers summary judgment of noninfringement.

Summary Judgment Basics: On appeal, the CAFC reversed — finding that the NJ District Court had been too quick to discount Warner Lambert’s expert witness testimony. In particular, the patentee’s expert had performed a test on Teva’s samples and determined that the acidic content of those samples fell within the scope of the claims. On summary judgment, “all reasonable inferences” must be weighed in favor of the non-moving party — here, those inferences lead to the conclusion that Warner Lambert’s expert might be correct and that the summary judgment was improperly issued.

Claim Construction: The CAFC also affirmed that a claimed “anion of a mineral acid” is properly defined as an “anion derived from a mineral acid” based on the plain language of the claim. 

A jury will likely now decide whether the generic manufacturers have done enough to avoid infringement.

Typically, generic manufacturers stay off the market throughout patent litigation in order to avoid the potential risk associated with infringement damages. Here, however, Teva began selling gabapentin in 2004 and several other generic manufacturers quickly followed.

Notes:

  • Morris Nichols of Delaware represented the Patentee
  • Mr. Haug of Frommer Lawrence Haug; Steven Lee of Kenyon & Kenyon; and Richard Basile of St. Onge represented the various generic manufacturers.

 

 

Ineligible Subject Matter: 35 USC 101 Finds its Teeth (Biting into Nonobviousness)

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In re Comiskey (Fed. Cir. 2007); and
In re Nuijten (Fed. Cir. 2007)

  • Comiskey’s patent application claims a method of arbitrating that does not necessarily require the use of any ‘technology.’
  • Nuijten’s patent application claims a signal containing a ‘watermark’ without being tied to a specific type of signal or any technology.

Both applications have been denied by the Federal Circuit under 35 U.S.C. Section 101 for their failure to claim patentable subject matter.

The scope of patentable subject matter is defined by Section 101 as any “new and useful process, machine, manufacture, or composition of matter.”  Any patent claim must fall within at least one of these categories.  Further limiting these categories is our precedential history that not every new and useful process constitutes patentable subject matter. See, for example, Flook & Benson.  In particular, the Supreme Court has noted that a process claim reciting an algorithm must either be (1) tied to a machine or (2) transformative of some composition of matter or device. Flook & Diehr.

Under these precedents, a claim that includes a mental process may be patentable — so long as it is otherwise tied to ‘reality.’

Comiskey: The Comiskey method of claim 1 admittedly does not require a machine, but it does require interaction with a ‘document.’  The reference to a document, however, was not enough to allow the “mental process” claim to be treated as legitimate.

“Thus, like the claims that the Supreme Court found unpatentable in Benson and Flook and the claims found unpatentable in our own cases, Comiskey’s independent claims 1 and 32 seek to patent the use of human intelligence in and of itself. Like the efforts to patent “a novel way of conducting auctions” which Schrader found to be directed to an abstract idea itself rather than a statutory category, Comiskey’s independent claims 1 and 32 describe an allegedly novel way of requiring and conducting arbitration and are unpatentable.”

Some of Comiskey’s claims arguably require a computer to operate through “modules.”  That claim construction transforms those claims to be patentable subject matter.  This means that software remains patentable subject matter if a computer limitation is a proper part of the claim.

Section 101 is Safe: Comiskey appear to reinstate something akin to the USPTO’s ‘technological arts’ requirement that had been eliminated by the Lundgren decision.  For Comiskey, recitation of a microprocessor as a limitation of the claims was sufficient to overcome the patentable subject matter issue. Notably, this is a rule of formality that, in most instances, can be followed without substantively reducing claim scope.  Under Comiskey, there is no requirement that the technical link be something novel or non-obvious. 

Section 103 is Lost: Although the question of patentable subject matter does not require a determination of nonobviousness, the reverse is not true.  Nonobviousness may now require an input from the patentable subject matter stage. The most interesting lines of Comiskey are as follows:

“The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness. Moreover, there is no pertinent evidence of secondary considerations because the only evidence offered is of long-felt need for the unpatentable mental process itself, not long-felt need for the combination of the mental process and a modern communication device or computer.”

The implicit holdings here: (1) evidence of secondary considerations do not apply to portions of an invention that are not considered “patentable subject matter;” and (2) during nonobviousness analysis, any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious.

Nuijten: The Nuijten court bit off a bit more — finding that a signal is not patentable even if tied to a transitory form (such as a radio broadcast or light pulses in a fiber optic cable).  The problem – the court could not fit a ‘signal’ into any of the four categories:

  • Process: Process is defined in Section 100 as a “Process, Art, or Method.” The ‘art’ term appears on its face different than a typically process — especially based on the constitutional statement of “useful arts.” However, the CAFC refused to expand the meaning of process to include items that do not require an action. Thus, a signal is not a process.
  • Machine: The Supreme Court has defined a machine as “a concrete thing, consisting of parts, or of certain devices and combination of devices.” Burr (1863). Under this definition, a signal is not a machine.
  • Manufacture: The court limited a manufacture to an “article” produced by man. According to the court, an ‘article’ is not transient and cannot exist in a vacuum — both qualities of a signal. Thus, a signal is not a manufacture.
  • Composition of Matter: A transient electric signal is not a “chemical union, nor a gas, fluid, powder, or solid.” Therefore, a signal is not a composition of matter.

Failing to fit within a predefined category, the only conclusion is that a signal is not a patentable subject matter.

Rules of Practice:

  • Gangrene Treatment: In the political world of the courts, this case might be seen as the CAFC’s gangrene treatment — where the Supreme Court is the disease and patent law jurisprudence is the patient.  Several toes have already been lost, and the CAFC is cutting off a foot to prevent the disease from spreading any further.
  • Morse Code: One important statutory subject matter case is that of O’Reilly v. Morse (1853) – invoving the patenting of Morse code. In that case, the Supreme Court invalidated some claims as overbroad, but found that Morse’s claim to a “system of signals” to be patentable as an ‘art.’  The CAFC, of course, does not overrule Morse, nor does it adequately explain how Morse’s patent would fit within our modern conception of the four categories.

Gillespie v. DWIDAG: Prosecution Arguments Limit Claim Scope

Claim Construction, Patent, Patent Cases 2007

ScreenShot050Gillespie v. DWIDAG Systems (Fed. Cir. 2007)

During prosecution, Gillespie argued around a cited prior art mine roof bolt reference — arguing that the collar of the bolt ‘appears to be cylindrical on the outside, thus impractical…’ Reviewing claim construction de novo, the appellate panel led by Judge Newman limited the claim scope to only cover non-cylindrical collars. (Following the maxim that a “patentee is held to what he declares during the prosecution of his patent.”).

Gillespie argued that the claims should not be limited by his statements because the non-cylindrical collar shape did not turn out to be material to allowance. (The Examiner provided alternative reasons for allowance). The CAFC rejected that potential loophole – finding that Gillespie’s argument was sufficient regardless of its importance in the prosecution process.

DWIDAG’s bolts were thus found to not infringe this new construction.

Notes:

  • The court appears to have been careful not to use the term disclaimer. 

 

Patent Reform 2007: House of Representatives Passes H.1908

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Legislative patent reform still has a long road to travel before reaching its conclusion. However, the passage of H.1908 by the House of Representatives represents a major leap forward along the path. The following are some highlights of the statute as passed. [H.1908.As.Passed].

First to file system: Obviousness and novelty would now be considered as of the “effective filing date.”  Novelty grace period would be eliminated except for the inventor’s own disclosures. Although unclear, the grace period appears to be completely eliminated for obviousness analysis. Interferences are gone.

Damages: Reasonable royalty calculations (the most common damage awards) would all require courts to conduct a thorough analysis to ensure that damages are equal to the “economic value [of the invention] properly attributable to the patent’s specific contribution over the prior art.” The entire value of a product or process can only be the basis for royalty calculations if the innovation is the “predominant basis” for market demand of the product. (a showing that may be impossible in most cases). Overall this would reduce damage awards.

Search Reports: PTO would be granted discretion in ordering search reports for all applications except those by a new group called ‘micro-entities.’

Treble Damages: The statute explicitly calls-out ‘willfulness’ as the sole reason for enhanced damages then severely limits the facts where willfulness can be found. Overall this reduces the likelihood of awarding treble damages.

Post-Grant Review: In addition to reexamination, a post-grant review proceeding would be available if filed within 12–months of issuance or with the patentee’s permission.

Open Examination: Anyone may submit prior art for any patent or pending application along with an explanation of why the art is important.

Tax Methods: A patent would not be available for a newly invented tax planning method. Tax planning methods do “not include the use of tax preparation software or other tools used solely to perform or model mathematical calculations or prepare tax or information returns.”

Venue and Jurisdiction: Strong limitations on venue would likely eliminate E.D.Texas as a potential choice.

Interlocutory Appeal: A district court would be given discretion to certify interlocutory appeals of claim construction decisions.

Inequitable Conduct: Inequitable conduct must be pled with specificity following FRCP Rule 9b. Inequitable conduct rules would be made explicit in the statute. Overall, this weakens the defense of inequitable conduct.

PTO Regulatory Power: The statute would give the PTO power to make the continuation rule changes that it has already implemented.

Patent Trial and Appeal Board: Following John Duffy’s Suggestion, the statute would have the board appointed by the Secretary of Commerce rather than the PTO Director.

Study of Patent Damages: The PTO will study how damage awards have changed based on the changes in the law.

Appellate Panel Upholds Forest’s Lexapro Patent

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PatentLawPic030Forest Labs v. IVAX (TEVA) and CIPLA (Fed. Cir. 2007).

The Court of Appeals for the Federal Circuit today upheld Forest Labs patent on its billion dollar SSRI Lexapro (escitalopram oxalate) — rejecting IVAX’s arguments that the patent is anticipated and obvious. Based on two FDA extensions, the patent is set to expire on March 14, 2012.

This case is an important stepping stone in our new understanding of obviousness.  Interestingly, in its multi-page discussion of obviousness, the appellate panel did not mention the Supreme Court’s recent landmark decision of KSR v. Teleflex. 

History: Forest holds an expired patent on a racemic form of citalopram. After considerable effort, Forest’s scientists doubled the strength of the drug by isolating the (+) stereoisomer (which turned out to be the only active isomer) and patented that isomer in a “substantially pure” form.  A prior art pharmacologic paper had suggested that the (-) stereoisomer would be the potent isomer, but that reference did not describe the preparation of the enantiomer.

(more…)

Prosecution Disclaimer Narrows SOME of the claims

Claim Construction, Patent, Patent Cases 2007

ScreenShot025Ormco v. Align Technology (CAFC 2007, 06–1240)

Here, prosecution disclaimer narrowed Ormco’s patent claim scope, but only for some of the claims.

Ormco’s invention relates to computer-aided design of orthodontics.  During prosecution Ormco distinguished its invention based on its automated calculation of final tooth position even though the claims do not explicitly require fully automated calculations.  Although finding the disclaimer clear, the CAFC required some relation between the disclaimer and any affected claim before narrowing claim scope. As a consequence, the scope disclaimer only applies to claims directed at finish tooth positions and not to other claims — such as those directed to preliminary organization of tooth data.

Dissent: Dissenting from the majority opinion, Judge Kathleen O’Malley (N.D.Ohio, sitting by designation) criticized both the majority and the lower court for their procedural sloppiness.  Judge O’Malley would have remanded to wait for a more developed opinion from the district court.

Notes:

  • In passing, the court reminds us that the existence of prosecution disclaimer is determined within the claim construction phase – and thus reviewed de novo.
  • The patents at issue are quite hefty for this type of technology – 97 pdf pages.

In Reexamination, PTO is Not Bound by District Court Claim Construction

Patent, Reexamination,

In re Trans Texas Holding Corp. (Fed. Cir. 2007)

Trans Texas holds two patents directed to a system of insulating both deposits and loans from inflationary and short-term interest rate fluctuations. In earlier litigation, a Texas district court construed various claim terms. Now, in reexamination, the PTO has taken a fresh look and offered its own interpretation of the claims.

Issue Preclusion (AKA Collateral Estoppel) traditionally blocks the same parties from relitigating the same issue in a later proceeding. CAFC caselaw has identified four elements of issue preclusion:

  1. Identity of the issues in a prior proceeding;
  2. The issues were actually litigated;
  3. Determination of the issues was necessary for the prior judgment; and
  4. The party defending against preclusion had a “full and fair opportunity to litigate the issues.”

Ex Parte Proceeding: Although reexamination is an ex parte proceeding, the CAFC considers the PTO to be a “party” as any other outcome “simply makes no sense.”

The PTO is plainly a party to these appeal proceedings, and if it were not treated as a party, there would be no basis for even considering the application of issue preclusion in the first place.

Since the PTO did not have an opportunity to litigate the issue in the Texas district court, it cannot be bound by that decision.

[T]he PTO was not even a party to the earlier district court litigation and cannot be bound by its outcome.

Obviousness affirmed.

Patented Method of Arbitration :

Patent

PatentLawPic005Cybersettle v. National Arbitration Forum (NAF) (Fed. Cir. 2007) (non-precedential)

Cybersettle owns the patent on a computerized dispute resolution method. Disputing parties make settlement bids into a computer. If there is a close-enough match between the parties, the case is settled. A party may pre-submit multiple bids to be used in consecutive bidding rounds.

The National Arbitrators Forum (NAF) is a private corporation that handles arbitration and was sued for infringement — apparently after conducting 100,000+ such resolutions. NAF lost its infringement suit, but appealed on claim construction.

Cybersettle’s claimed method includes the steps of “receiving a plurality of demands [and] a plurality of settlement offers.” The lower court, however, did not require the receipt of multiple offers and demands. Rather, the claim was construed to be satisfied if the system “has the capacity to receive multiple offers and demands, even if ony one demand and one offer are received.”

On appeal, the CAFC reversed, finding that a claimed method requires actual practice of the method — not simply the capability.

A patented method is a series of steps, each of which must be performed for infringement to occur. It is not enough that a claimed step be “capable” of being performed.

On remand, the district court will need to determine what portion of NAF’s infringing actions included multiple offers and demands.

In the course of their operation, the accused … systems would infringe (assuming all the other claim limitations were satisfied) only when they received multiple demands and multiple offers; proof that those systems were capable of receiving multiple demands and multiple offers is not proof that they ever performed the claimed methods.

Vacated and remanded.

Notes:

  • National Journal (Andrew Noyes) previewed the case on July 9, 2007. [LINK]
  • Interestingly, the opinion offered no discussion of patentable subject matter issues.
  • The patent [LINK]

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In re Metoprolol Succinate Patent Litigation (Fed. Cir. 2007).

Astra holds the patent on Toprol-XL (Metoprolol succinate) and sued several generic ANDA filers. On summary judgment, a Missouri Federal court held Astra’s patent invalid for improper obvious-type double patenting and unenforceable. Astra appealed for inequitable conduct during prosecution.

Double-Patenting: A later patent claim will be invalid for obviousness-type double patenting if it is not patentably distinct from an earlier claim from a commonly-owned patent. This analysis involves construction of both sets of patent claims.

[T]he critical inquiry remains whether the claims in the [prior] application define an obvious variation of the invention claimed in the … patent [at issue].

Normally, obviousness-type double patenting is avoided by filing a terminal disclaimer. Here, however, a secret inventorship and ownership dispute prevented such action.

Invalidity affirmed.

Inequitable Conduct: On summary judgment, the district court also found the patent unenforceable based on Astra’s failure to notify the PTO of the inventorship dispute during prosecution.  Inequitable conduct, however, is rarely found on summary judgment. Here, the CAFC saw potential holes in proof of intent — finding that the “district court erred in equating the presence of an incentive with an intent to deceive on summary judgment.”

Dissent: Judge Schall dissented

BPAI Pecedential: Obviousness of a Combination

Patent,

Pay_by_touchEx parte Catan (BPAI 2007).

Catan’s invention involves using a bioauthentication device (e.g., fingerprint scanner) to authorize credit-account orders. On appeal, the Board of Patent Appeals & Interferences (BPAI) affirmed the Examiner’s finding of obviousness based on a combination of references. 

As we know, a combination of familiar elements used according to known methods is probably obvious unless it yields unpredictable results. Obviousness determinations at the PTO are, at least theoretically, made easier by giving claim terms “their broadest reasonable construction.” In Catan’s case, for instance, the claimed ‘consumer electronic device’ could reasonably include a combination of base and remote stations communicating over a wireless network. (no “local” requirement).

Two pieces of prior art were presented: Nakano disclosed everything except that a password was used instead of the bioauthentication device, and Harada disclosed a fingerprint scanner. A third reference, Dethloff, taught that bioauthentication can substitute for a password.

This really is an easy example of obviousness:

“The claim is to a structure already known in the prior art that is altered by the mere substitution of one known element for another element known in the field for the same function. The facts themselves show that there is no difference between the claimed subject matter and the prior art but for the combination itself.”

The Board goes-on to say that the linking-reference (Dethloff) was not necessary, but it makes the case against the applicant even tighter. Motivation for the combination is also found in Harada, which also discusses various types of authorization techniques.

Notes:

  1. This case would probably have been affirmed before KSR.
  2. Reasons for combining prior art must still be explained.
  3. Winners provide at least some “unpredictable results.”  (What could this applicant have argued? – some potential credit users are fearful of losing their password and others are especially prone to forgetting their password. . . the invention opens protected credit transactions to a whole new segment of the population. A $20k study could probably support this theory…)

CAFC: General Purpose Computer Does Not Include RISC Processor

Patent

Patent.Law001Hutchins v. Zoll Medical (Fed. Cir. 2007)

[Updated] Hutchins is an individual inventor and represented himself pro [se] before the district court and on appeal. Hutchins’ patent relates to computer aided CPR. (U.S. patent no. 5,913,685). The district court granted summary judgment of noninfringement in favor of Zoll.

Hutchins lost on claim construction — with the courts holding that a “general purpose computer” does not include the RISC processors. The prosecution history made this finding easy as the “general purpose computer” limitation was added during prosecution to avoid “similar devices with dedicated microprocessor units.”

Honeywell as Lexicographer: Heading Defined as Bearing

Patent

Honeywell v. Universal Avionics (Fed. Cir. 2007).

GulfstreamHoneywell holds a patent covering a final-approach flight warning system. The novel system was able to determine whether the flight was in its final-approach without relying upon wing flap position. Universal’s TAWS system is allegedly infringing. After claim construction, a jury found infringement.

Honeywell’s claim discussed the “heading” of the aircraft in one element of the claim. The drafter should have used “bearing” instead because the focus was on the aircraft’s relative direction.  On appeal, the CAFC determined that the specification did its job of redefining heading and thus, allowed the court to define heading as the bearing.

The specification of the ’436 patent clearly communicates the meaning the patentees have assigned to the term “heading.” It does so by describing the claimed system’s alignment determination as depending on the direction of the aircraft from the runway (i.e., what is conventionally known as the aircraft’s bearing), not the direction in which the aircraft is pointing (i.e., what is conventionally known as the aircraft’s heading).

Lessen to consider: The patentee Honeywell won here because its patent claim was narrowly defined.

Notes:

  • In June 2007, another case between Honeywell and Universal was decided by the CAFC. [LINK]

Premier Cru: CAFC State of the Court

Patent

PaulMichelDrinkChief Judge Paul Michel raises several important issues in his “state of the court” address on June 28.

  • Veterans Cases On the Rise: With continued war, we can expect that veteran benefit cases will continue to rise and may potentially “swamp [the] court before year’s end. . . . it could be catastrophic. . . . Three remedies are being pursued: we are working harder, adding visiting judges, and relying on mediation.”
  • Patent Reform: “Two provisions of this complex, lengthy bill are of concern. They could impose enormous burdens on the court: one making all claim construction rulings immediately appealable as of right and another that dictates that courts in every case must apportion reasonable royalty damages, and do so by one particular methodology that requires valuation of all prior art. I have informed Congress of my concerns and I know they are being considered.”
  • Pro Bono Opportunities: Those interested in getting CAFC appellate experience should contact the Chief Clerk (Pam Twiford) about volunteering for MSPB appeals.
  • Electronic Documents: The plan is to get e-document PACER working by this Fall. (That means I won’t have to post briefs on Patently-O any longer!).

Broadened Continuation Receives Broad Construction; Enablement Questioned

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Saunders Group v. Comfortrac (Fed. Cir. 2007).

Typical use of continuation practice: (1) Patentee files application claiming feature B1 (as the only described embodiment of generic class B). (2) Competitor releases product that would be infringing except for its feature B2. (3) Patentee files continuation that replaces B1 with the generic element B. (4) patent issues. What happens in upcoming litigation?

This scenario, which is exemplified in Saunders Group, raises at least three particular litigation issues listed in order applicability: (1) whether the broad scope of element B has been properly enabled; (2) whether the specific element B1 is an essential element of the invention whose removal would be a violation of the written description requirement discussed in Gentry Gallery; and (3) whether the broad term B should be construed in a limited fashion to avoid problems 1 and 2 (applying the maxim that claims should be construed to preserve validity).

We know from Saunders Group, of course, that it is impermissible to import limitations into a claim even when hoping to preserve validity of the claim.  Especially where here, there was no question that “the applicant expressly and unambiguously state[ed] his intention to claim broadly.”

Here, the lower court had issued a summary judgment of non-infringement based on its narrow claim construction (construing B as B1). The CAFC reversed that holding, but suggested that invalidity under enablement is the correct avenue to pursue on remand:

[W]e hold only that the court’s validity analysis cannot be used as basis for adopting a narrow construction of the claims. Instead, any validity issues that the defendants have preserved and wish to press can be addressed on remand, as was done in the Liebel-Flarsheim case. See Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371 (Fed. Cir. 2007) (holding invalid claims that had been given a broad construction at the patentee’s behest in an earlier appeal).

Notes:

  • This type of case may soon be history if new continuation rules are truly effected.

CAFC: “Near the Edge” Not Indefinite; Curing Inequitable Conduct

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PatentLawPic001Young v. Lumenis, Inc. (Fed. Cir. 2007)

Dr. Young invented a surgical method of declawing a cat using lasers. (feline onychectomy).  Lumenis makes surgical lasers that were allegedly during unauthorized infringing surgeries.

Lumenis is a manufacturer, seller, and distributor of surgical laser instruments that were alleged to have been used to perform Young’s patented surgical procedure.

Young filed an infringement suit and Lumenis counted with an inter partes reexamination. (Patent 6,502,579). The PTO issued an office action rejecting the claims and the district court found the patent invalid and unenforceable

Indefinite: In particular, the district court found the word “near” to be indefinite as it was used in claimed step: “forming [an] incision in the epidermis near the edge of the ungual crest.”  Although the district court roughly understood its meaning, it found “near” to be indefinite because it “fails to distinguish the invention over the prior art and does not permit one of ordinary skill to know what activity constitutes infringement.”

On appeal, the CAFC reversed — noting again that claims are indefinite only when they are “not amenable to construction or are insolubly ambiguous.”  An indefiniteness ruling necessarily requires claim construction and examination of any intrinsic evidence. Here, the intrinsic evidence resolves the meaning of near — with both a drawing and reference to cat-sized measurements.  Here, the court distinguished the infamous Amgen case that found “about” to be indefinite: in Amgen, the potential error range of “about” was quite wide and the term had been added to the claims post-filing.

Inequitable conduct — better late than never: The CAFC also disagreed with the lower court’s finding of inequitable conduct — finding that Young’s late submission of contrary deposition statements cured any potential problem: “The essence of the duty of disclosure is to get relevant information before an examiner in time for him to act on it, and that did occur here.”

Reversed

No Appellate Jurisdiction For Appeal of Preliminary Injunction Contempt Order

Patent, Patent Cases 2007

Photokleen Entegris (Mykrolis) v. Pall Corporation (Fed. Cir. 2007).

Mykrolis sued Pall — accusing its competitor of infringing patents related to high-quality liquid filters used in the semiconductor industry. After claim construction, the district court issued a preliminary injunction, but Pall continued to sell a ‘modified’ design.  During a contempt proceeding, the court held Pall in contempt for its continued sales, but also dissolved the preliminary injunction based on new evidence of invalidity. Both sides appealed.

Jurisdiction for appeal of contempt order: The CAFC has interlocutory jurisdiction over preliminary injunction issues such as the issuance, modification, or dissolution of a preliminary injunction. However, the CAFC here held that there is no interlocutory jurisdiction for an appeal of a contempt finding that does not itself modify the injunction. In addition, even though Pall must pay the contempt fine immediately, under Supreme Court precedent, a contempt decision is not considered an appealable final judgment. Finally, interlocutory appeals do not generally provide supplemental jurisdiction unless issues are inextricably intertwined. The contempt appeal was thus dismissed.

Preliminary Injunction: The burden of proving validity is shifted at the preliminary injunction stage where the patentee must show "a likelihood of success on the merits" with respect to both validity and infringement.  A defendant who raises a "substantial question" of invalidity will defeat a preliminary injunction unless it "lacks substantial merit." 

It is often difficult for a plaintiff to win an appeal after dissolution or denial of a preliminary injunction because the lower court’s decision is based on a loose set of factors that are reviewed only for clear error. Here, Mykrolis failed to show clear error in the lower court’s finding of a substantial question of invalidity.

Affirmed.

Notes:

  • Interlocutory jurisdiction: Power to hear an appeal before the lower court issues a final judgment. Interlocutory jurisdiction is generally quite limited and narrowly granted.
  • Hamilton Brooks cooperated with Ropes & Gray in representing the plaintiff Entegris.
  • Leydig Voit represented the defendant Pall Corp.

Tribunal Theory

Patent, ,

Patent.Law007The tri prefix of tribunal may evoke an image of three judges sitting jointly at the bench.  In practice, however, tribunal refers to any sitting judicial body – regardless of the number of judges.

The Court of Appeals for the Federal Circuit (CAFC) normally convenes in three judge tribunals to hear appeals. Motion practice, such as an emergency motion for a stay of an injunction, is often heard by a single judge.  According to statute, en banc panels usually consist of all (twelve) active members of the court. 28 USC 46(c).

A larger panel is thought to provide more stability and predictability, while a smaller panel theoretically provides a greater variance.

To see how panel size might alter litigation practice, lets take an example case where the lower court issues a permanent injunction that will be enforced within ten days. Question: Should the losing defendant hope for (1) a three judge panel to hear its emergency appeal or (2) a lone appellate judge? 

The answer, after several assumptions including independence, is that the appellant’s favored panel size varies with the strength of its argument.  If the appellant has a high (greater than 50%) chance of convincing each expected judge, then it is better off with a larger panel.  On the other hand, if the appellant has a low (less than 50%) chance of convincing each judge then he would likely get better results from a single judge.

This is easy to work out a computational example: For the first case, if we expect that the appellant has a 65% chance of convincing each judge of its case, the probability of convincing at least two judges rises to 72%. Thus, the appellant would be better off with a panel (72% chance of winning) rather than a single judge (65% chance of winning). On the other hand, if the appellant thought that its appeal had only a 35% chance of convincing each judge, the probability of convincing at least two judges drops to 28%.  Thus, the appellant who expected to lose would be worse off with a panel (28% chance of winning) rather than a single judge (35% chance of winning).  The larger panel also helps smooth over variance amongst the judges — tilting the scales further in favor of an expected winner.  A long shot case would hope for the squirrelly judge on a small (solo) panel.

In a May 6, 2007 distribution, Hal Wegner suggested a series of “Mini en banc” panels with seven (or five or nine) members — especially in the area of obviousness.  As the panel size increases, good cases theoretically win more often and should be losers lose more often.

Four Judge Panels: One simple step that could make a tremendous difference regarding stability of appellate determinations would be to shift the normal panel size from three judges to four judges.  The CAFC has power to make this change under 28 USC 46, which states that “the Federal Circuit may sit in panels of more than three judges if its rules so provide”.

On appeals, a split judgment is equivalent to an affirmance of the lower court decision. Thus, an appellant arguing to a four judge tribunal must convince three of the four judges of its case — creating a much larger, super-majority hurdle for the appealing party. The problem with the four judge approach is that it also creates an outcome skewed toward affirmance — something that could be seen as unfair. However, I expect that claim construction decisions reviewed de novo by a four member panel would help us return from our long vacation (or at least reduce the number of claim construction opinions being vacated).

The four judge approach would also violate Federal Circuit Rule 47.2, that requires “a panel consisting of an odd number of at least three judges.”