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									A Year in
Federal Circuit 2004-
       June/July 2004 – June/July

                 Gale R. Peterson
              Cox Smith Matthews
                   San Antonio, Texas

                                                           IPO Annual Meeting
                                    September 11-13, 2005, Seattle, Washington
Novelty and the Loss of Right
to a Patent - § 102

   Highlights
    – Increased emphasis on claim construction
    – Disagreements re inherency resolved
    – Continuing struggle w/ “on sale” and “in
      public use” issues

Claim Construction-Anticipation
   More than 9 new cases
     Unitherm Food Sys. v. Swift-Eckrich, Inc., 340
      F.3d 1314 (Fed. Cir. 2004)(J. Bryson – JJ. Lourie and
      Rader) – p. 6
     In re Crish, 393 F.3d 1253 (Fed. Cir. 2004) (J.
      Lourie – Circuit Judge Mayer, J. Dyk) – p. 8
     Alza v. Mylan Labs., 391 F.3d 1365 (Fed. Cir.
      2004)(SJ. Archer – J. Newman – concurring-in-part,
      dissenting-in-part J. Dyk) – p. 9
     Medrad, Inc. v. MRI Devices Corp., 401 F.3d
      1313 (Fed. Cir. 2005)(J. Bryson – SJ. Friedman and
      J. Radar) – p. 12
Claim Construction-Anticipation
   More than 9 new cases
     Sentry Protective Products, Inc. v. Eagle Manufacturing
      Co., 400 F.3d 910 (Fed. Cir. 2005) - J. Prost – JJ. Lourie and
      Schall p. 14
     MercExchange, L.L.C. v. eBay, Inc., 401 F.3d 1323 (Fed.
      Cir. 2005) – J. Bryson - CJ Michel, J. Clevenger – p. 16
     ArthroCare Corp. v. Smith & Nephew, Inc., 406 F.3d 1365
      (Fed. Cir. 2005) J. Bryson – JJ. Mayer and Lourie – p. 17
     Prima Tek II, L.L.C. v. Polypap, S.A.R.L. (Prima Tek -2),
      ___ F.3d ____ (Fed. Cir. 2005) – J. Dyk – J. Gajarsa, SCJ.
      Plager p. 18
     Northpoint Tech., Ltd. v. MDS-Am., Inc., ___ F.3d ___
      (Fed. Cir. 2005)(J. Bryson – J. Schall, concurring-in-part,
      dissenting-in-part J. Dyk) – p. 22                          4
Claim Construction-Anticipation
Unitherm Food Sys. v. Swift-Eckrich, Inc.,
340 F.3d 1314 ( Fed. Cir. 2004)(J. Bryson – JJ. Lourie and Rader) – p. 6

   Numeric Ranges - Not Read Into Claims
   Evid - Accused Inf‟r – Prior “In Public Use”
    − Method - browning of pre-cooked meat
    − ConAgra - ltr to industry – will enforce patent
    − Unitherm – d/j – invalid & Walker-Process Sherman 2
    − Process - invented & demonstrated to ConAgra < critical date –
      prior “in public use”
    − “Golden Brown color” not ltd by spec
    − Invalid
    Claim Construction-Anticipation
Northpoint Tech., Ltd. v. MDS-Am., Inc.,
___ F.3d ___ (Fed. Cir. 2005)(J. Bryson – J. Schall, concurring-in-part,
dissenting-in-part J. Dyk) – p. 22

   Claim Construction Results in
    Finding of Anticipation
    − transmitting terrestrial signals -
      common frequency w/ satellite
    − Northpoint - p/a did not teach
      antennas pointed opp directions
    − D. Ct. - “directional reception range”
      not ltd where receiving antenna
    − Fed. Cir. - Aff‟d                                                    6

   Highlights
    – Whether one of ordinary skill in the art
      must have recognized the inherency –
      now resolved?


   Generally
    – A prior art reference that does not explicitly disclose or
      teach a particular claim element may nevertheless
      anticipate a claim containing such an element if the prior
      art inherently discloses the element
    – In order to establish inherency, the extrinsic evidence
      “must make clear that the missing descriptive matter is
      necessarily present in the thing described in the reference
      and that it would be so recognized by persons of ordinary
           Continental Can Co. USA v. Monsanto Co. (1991) – J.

Anticipation - Shown Through

   Must one of ordinary skill in the art recognize what
    was asserted to be inherent?
Continental Can 1991 = Yes                    MEHL/Biophile 1999 = No
Atlas Powder 1999 = No                        EMI Group 2001 = No

     Elan Pharms., Inc. v. Mayo Found. For Med. Res., 304
    F.3d 1221 (Fed. Cir. 2002) – VACATED (en banc) – Alzheimer – Yes – (J.
    Newman – JJ. Gajarsa & Dyk) – p. 27
        • Majority (Newman) = one of ordinary skill in the art would not have
        recognized the asserted inherency
        • Dissent (Dyk) = “it matters not that those of ordinary skill heretofore
        may not have recognized these inherent characteristics.”
        • “Replacement” Opinion - 346 F.3d 1051 (Fed. Cir. 2003) – Remanded
        to determine whether p/a was enabling
Anticipation - Shown Through

   Schering Corp. v. Geneva Pharms.,                    339 F.3d 1373
    (Fed. Cir. 2003)(J. Rader – SCJ Plager & J. Bryson) – p. 27
     − (1) An inherent feature of a p/a reference need not be perceived as
       such by a person of ordinary skill in the art before the critical date
     − (2) A p/a reference may inherently anticipate the entire claimed
       subject matter – even though not mentioned
         −   Patent # 1 – Loratadine – CLARITIN™
         −   Patent # 2 – Metabolite of loratadine - DCL
         −   Patent # 1 p/a to Patent # 2
         −   DCL formed when patient ingested loratadine
         −   “this court’s precedent does not require a skilled artisan to recognize
             the inherent characteristic in the p/a that anticipates the claimed
Anticipation - Shown Through

   Schering Corp. v. Geneva Pharms. (Schering II),
    348 F.3d 992 (Fed. Cir. 2003)(J. Rader w/ SCJ Plager and J. Bryson)
     – Pet. for panel reh’g – denied
     – Pet. for reh’g en banc - denied
            Dissents - Judges Newman and Lourie
            Judge Gajarsa - would rehear en banc
            Judge Schall - did not participate in the vote

Anticipation - Shown Through

   Toro Co. v. Deere & Co., 355 F.3d 1313
    (Fed. Cir. 2004)(J. Michel - JJ. Lourie and Linn) – pg. 28
     – Schering is the law

Anticipation - Shown Through

   Toro Co. v. Deere & Co.,              - Cont‟d
    – “Simply put, the fact that a characteristic is a necessary
      feature or result of a prior-art embodiment (that is itself
      sufficiently described and enabled) is enough for inherent
      anticipation, even if that fact was unknown at the time of
      the prior invention.”

Anticipation - Shown Through
SmithKline Beecham Corp. v. Apotex Corp.
(SmithKline III)., 403 F.3d 1331 (Fed. Cir. 2005)(J. Rader - J.
Bryson, concurring opinion J Gajarsa) – p. 29

   When a Product is Naturally Produced by Practicing the Prior Art,
    There is Inherent Anticipation
     – Claim – “Crystalline paroxetine hydrochloride [PHC] hemihydrate.”
     – Paroxetine cmpd known from ‟70‟s
     – Ferrosan – now expired „196 patent – PHC anhydrate –
       antidepressant – licensed to SKB
     – Late 1980‟s – SKB scientist in UK develops crystalline form – more
       stable – FDA – approval PAXIL - 1993
     – Apotex – ANDA – PHC anhydrate
     – SKB – infringes – “disappearing polymorph” – once crystalline form
       made environment is “seeded” – cannot produce “pure” form of
       PHC anhydrate w/o some crystalline form                          14
Anticipation - Shown Through
SmithKline III - Cont’d
  – D Ct – CJ Posner – ltd claim to “commercially significant amts”
    of crystalline
         Fed Cir – error – nothing in claim so requires
  – D Ct – no inf‟g – equity – SK created the problem
         Fed Cir – unnecessary to address “potential merit”
  – Fed Cir (First Opinion) – crystalline form id‟d in 1985 in UK
         U.S. clinical tests – 1985
         UK appl – 1985
         US appl – 1986 > 1 yr after US clinical trials
         SK – “experimental testing”
         Fed Cir – NO
  – Everybody – petitions for rehearing & rehearing en banc     15
Anticipation - Shown Through
SmithKline III - Cont’d

  – Fed Cir (Second Opinion) – inherent anticipation by
    „196 patent under Schering rationale
  – Problems
        D Ct – rejected inherent anticipation – Apotex did not
        SKB – pet re‟hrg – did not use „196 process – cannot be
         inherent anticipation
        Pet re‟hrg & re‟hrg en banc denied
  − Judge Gajarsa concurring
     −   B/C claim to cmpd – invalid under § 101 as naturally
         occurring.                                             16
 Anticipation -     Anticipation of Quantitative
 Claim Terms Cannot Be Shown by Relying on
 Prior Art Patent Drawings Alone

Nystrom v. TREX Co.,
 Inc., 374 F.3d 1105 (Fed. Cir.
  2004)(J. Linn - CJ Mayer & J. Gajarsa) -
  p. 37

   Claim: “defining a difference in thickness between the
   longitudinal centerline and the opposite side edges, with the ratio
   of said difference in thickness to the width of the board being
   about 1:40”


Nystrom v. TREX Co.- Cont’d
 –   TREX – invalid – computer modeling p/a dwg
 –   D Ct – s/j – invalid
 –   Fed Cir - REV‟D
 –   “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
 Anticipation -         Summary Judgment is Not
 Appropriate Where the Opposing Party Offers Specific
 Facts That Call into Question the Credibility of the
 Movant’s Witnesses

TypeRight Keyboard Corp. v. Microsoft Corp.,
 374 F.3d 1151 (Fed. Cir. 2004)(JJ. Dyke - Lourie and Shall) - p. 40
  – TypeRight – owner 2 patents – V-shaped keybrds – critical date =
  – MS – invalid – “Marquardt” doc – undated – showed unlabeled pix of
    V-shaped keybrds
  – Fed Cir – MS - “several consultants who were paid for the time they
    spent testifying.”
  – Dr. Cakir – fd doc in his “file from 1990” – but thought he had rec‟d
    doc at trade show in 1986
  – Dr. Hirsch – recalled seeing “similar” pix in 1986
  – No one ever contacted Marquardt GmbH
  – Fed Cir – “summary judgment is not appropriate where the opposing
    party offers specific facts that call into question the credibility of the
    movant‟s witnesses.”
Anticipation - Testimony

Schumer v. Lab. Computer Sys., Inc. (2002)
Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381
  F.3d 1142 (Fed. Cir. 2004)(J. Gajarsa – JJ. Bryson and Dyk) - p. 42
 Testimony Concerning Anticipation Must (1) Be From One Skilled in
  the Art, (2) Identify Each Claim Element, (3) State the Witnesses‟
  Interpretation of the Claim Element, and (4) Explain in Detail How
  Each Claim element is Disclosed in the Prior Art
    – Turn-Key‟s patent – “cross-laminating” layers of plastic
    – Koito – d/j – invalid – jury agreed
    – Turn-Key – JMOL
    – D Ct – DENIED – relied on single p/a ref Koito introduced
      into evid but w/o testimony
    – Fed Cir – ERROR – In order to prove anticipation –
      testimony of the type described in Schumer is req‟d
       Anticipation – Enabling Disclosure

In re Elsner, 381 F.3d 1125 (Fed. Cir. 2004)(JJ. Lourie - Clevenger
  and Bryson)(companion case w/ similar facts) – p. 43
 Evidence of a Foreign Sale of a Claimed Reproducible Plant Variety May
  Enable an Otherwise Non-Enabled Printed Publication Disclosing That
  Plant and Thereby Creating a § 102(b) Bar
   – Elsner – plant breeder – Germany – new geranium – “Pendec”
   – 1997 – filed Community Plant Variety Rts cert. in Germany
   – Published w/ name & address of breeder
   – 1998 – Pendec sold in Germany
   – 1999 – Elsner w/drew application
   – 2000 – filed plant patent appl. in U.S.
   – PTO – rej‟d – CPVO pub and sale placed skilled artisan in possession
      of the invention
   – LeGrice – CCPA – 1962 - § 162 – plant patent appl‟s need not
      comply w/ § 112 – BUT reference must be “enabling”

      Anticipation – Enabling Disclosure

In re Elsner – Cont’d
   – PTO – LeGrice – did not decide - foreign sale could enable
   – Fed Cir – agreed – issue – “whether evidence of the foreign sale of a
     claimed reproducible plant variety may enable an otherwise non-
     enabled printed publication disclosing that plant, thereby creating a §
     102(b) bar.” – YES
   – Fed Cir – “When a publication identifies the plant that is invented or
     discovered and a foreign sale occurs that puts one of ordinary skill in
     the art in possession of the plant itself, which, based on the level of
     ordinary skill in the art, permits asexual reproduction without undue
     experimentation, that combination of facts and events so directly
     conveys the essential knowledge of the invention that the sale
     combines with the publication to erect a statutory bar. “

   Anticipation – Enabling Disclosure

In re Elsner – Cont’d
  – REMANDED – to consider “how readily one skilled in the
    art could have learned of the foreign sales from the
    printed PBR applications.”
  – “[i]t is unclear * * * whether a skilled artisan would have
    known of the foreign sales. The foreign sale must not be
    an obscure, solitary occurrence that would go unnoticed
    by those skilled in the art. Its availability must have been
    known in the art, just as a printed publication must be
    publicly available.”

Anticipation – Rule 105

 Star Fruits v. United States., 343 F.3d 1277 (Fed.
   Cir. 2005)(J. Clevenger – J. Dyk, dissenting J. Newman) – p. 49
  Failure to Respond to a Request for
   Information Under Rule 105 May Lead to
   Abandonment of the Application – Rule 105 is
    – Rule 105 ex‟r may “require” submission of “information as
      may be reasonably necessary to properly examine or
      treat the matter”
    – Peach tree
    – Ex‟r – Any info re sale/public distribution of plant variety
      anywhere in the world
    – Star Fruits – ref‟d – Rule 56
    – PTO - abnd                                                   24

    – Fed Cir – Aff‟d abandonment
Anticipation – Enabling Disclosure

 Rasmusson v. SmithKline Beecham Corp.,
   ___ F.3d ___ (Fed. Cir. 2004)(J. Bryson – SJ. Plager and J.
   Prost) – p. 56
  A Reference Must Be “Enabling” to Anticipate, But That is
   Different from the Enablement Requirement of § 112(1)
     – Method treating prostate cancer - finasteride
     – Bd - publ‟d app could not anticipate b/c app failed to
       demonstrate finasteride effective in treating prostate cancer,
       plus app provided no reasonable expectation of success
     – Fed. Cir. – REV‟D & REMANDED – “the standard for * * *
       proper enablement of a prior art reference for * * * anticipation
       under section 102 * * * differs from the enablement standard
       under section 112.” “[P]rior art reference need not
       demonstrate utility in order to serve as an anticipating
       reference under section 102.”                                   25
Loss of Rights - § 102(b) – Patented or
Described in a Printed Publication - Public
In re Klopfenstein, 380        F.3d 1345 (Fed. Cir. 2004)(J. Prost, JJ
  Michel and Schall) – p. 67
 Poster Presentation May Qualify as a “Printed Pub”
   – Method - preparing food using extruded soy fiber
   – Fed Cir – Factors - poster presentation = printed pub:
       the length of time the display was exhibited,
       the expertise of the target audience,
       the existence (or lack thereof) of reasonable expectations
        that the material displayed would not be copied, and
       the simplicity or ease with which the material displayed
        could have been copied.
   – Fed Cir – key ? Is whether ref is “publicly available”
   – 14 slides displayed on poster for 2 ½ days – publicly
     available                                                  26
Loss of Rights - § 102(b) – “On Sale”

   UMC Electronics Co. v. United States,               816 F.2d 647
    (Fed. Cir. 1987) – ARTP not a prerequisite
   Pfaff v. Wells Electronics,        525 U.S. 55 (1998) (1) “First,
    the product must be the subject of a commercial offer for sale”
    and (2) “Second, the invention must be ready for patenting.”
   Group One, Ltd. v. Hallmark Cards, Inc.,                  254 F.3d
    1041 (Fed. Cir. 2001) – (1) “a commercial offer for sale” requires
    an offer that meets the level of an offer for sale in the contract
    sense, (2) decided per Federal Circuit law – will look to UCC,
    Restatement (2d) of Contracts, among other sources
   Linear Technology Corp. v. Micrel, Inc.,               275 F.3d
    1040 (Fed. Cir. 2001) – UCC varies – will look for “common
Loss of Rights - § 102(b) – “On Sale”

Sparton Corp. v. United States, 399 F.3d 1324 (Fed.
  Cir. 2005)(SJ. Archer - CJ. Michel and J. Schall) – p. 74
 With No Conception of an Invention, There Cannot Be
  An Offer for Sale or Sale of That Invention
   – Alleged sale - 1971 ECP to Navy - dual depth - sonobuoys
   – ECP did not propose patented invention
   – Invention later developed – included in actual buoys
   – Gov‟t & Claims Ct – U.C.C. § 2-106, 2-311 – Sparton could
     substitute “conforming goods” – therefore sale.
   – FED CIR – “[u]nder the Claims Court‟s analysis, the patented
     single part release plate was the subject of an offer for sale
     before it was even conceived. Such a result is illogical.”

Loss of Rights - § 102(b) – “On Sale”

   “in public use” and “on sale” bars – diff rationales
   “experimental use” – negation of “in public use”
   EZ Dock, Inc. v. Schafer Systems, Inc.,            276 F.3d
    1347, 61 USPQ2d 1289 (Fed. Cir. 2002) – J. Rader, CJ Mayer,
    “additional views” J. Linn –
   “the question posed by the experimental use doctrine,
    assessed under the first prong of the two-part on-sale
    bar test *** is *** whether the primary purpose of
    the inventor at the time of the sale, as determined
    from an objective evaluation of the facts surrounding
    the transaction, was to conduct experimentation.”
    Suggests 13 factors - Baker Oil Tools - 1987
Loss of Rights - § 102(b) – “On Sale”

   Allen Engineering Corp. v. Bartell Industries,
    Inc., 299 F.3d 1336 (Fed. Cir. 2002) – J. Linn, JJ. Gajarsa and Prost
     – First prong Pfaff analysis -
     – Whether product was “(1) the subject of a
       commercial offer for sale not primarily for purposes
       of experimentation * * *.”
     – Instructions to D. Ct. –
     – Must determine “whether a commercial offer for
       sale has occurred, applying traditional contract law
       principles,” and also “whether the circumstances
       surrounding the transaction show that the
       transaction was not primarily for purposes of
     – Use 13 factors - EZ Dock                           30
Loss of Rights - § 102(b) – “On Sale”

- Customer Awareness and Control by the Inventor
    Are Critical to a Finding of Experimental Negation
    of “on sale” Activity: Analysis is First to
    Determine Whether Any Pre-Critical Date “Sales”
    As Contemplated by § 102(b) Were Made and Then
    to Determine Whether Such “Sales” Were
    “Negated” By Experimentation
   Electromotive Division of General Motors Corp.
    v. Transportation Systems Division of General
    Electric Co., ___ F.3d ____, ____ USPQ2d ____ (Fed. Cir.
    2005) – C.J. Michel, SCJ Plager, J. Linn – NEW
     – Bearings – locomotive turbochargers
     – EMD – in-house testing & field durability testing   31
     – Substituted bearings – preordered locomotives
Obviousness - § 103 – Claim
Merck & Co. v. Teva Pharms., 395 F.3d 1364 (Fed. Cir. 2005)(J.
  Gajarsa – J. Prost, dissenting J. Radar) – p. 90
 The Term “about” Means “approximately”: When a Patentee
  Redefines a Term in the Specification, He Must Clearly do so:
  Circuit Judge Rader Dissenting – Court has a Truth in Advertising
    – Cmpds – treat osteoporosis – but adverse gastrointestinal side
      effects – administered in small daily doses
    – Invention - Once weekly – higher doses
    – Claim - “about” 70/35 mg once weekly
    – Spec – defined “about” – equivalent to 70 or 35 mg
    – P/a - intermittent treatment program & once weekly dosage
      schedule of 40mg OR 80mg
    – D. Ct. - “about” means exactly 70/35 mg - not obvious
    – Fed. Cir. REV‟D – “about” means “approximately”
    – J. Radar – spec defined “about”

In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004) (J.
   Rader – J. Schall, dissent by J. Newman) – p. 94
 Claims Are Given Their Broadest Reasonable
  Interpretation During Ex Parte Prosecution -
  “Hair Brush” Not Limited to One For
  Brushing Scalp Hair
    – Claims – “hair brush”
    – P/A – toothbrushes
    – Fed. Cir. majority – tooth brushes could be
      used for brushing hair, ie, facial hair
    – J. Newman dissented noting a “brush for
      hair has no more relation to a brush for
      teeth than does hair resemble teeth”

        Obviousness – Range Cases

       Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317 (Fed. Cir.
            2004)(J. Dyk – J. Newman and SJ. Archer) – p. 103
        Where There is a Range Disclosed in the Prior Art, and the Claimed
         Invention Falls Within That Range, There is a Presumption of
               – Invention –        plate w/ 3 handle openings
Patent-in-Suit – Three-Grip Plate weight
             – p/a – weight plates w/ 1, 2 and 4 grips
             – Fed Cir – “where there is a range disclosed in the p/a, and the claimed
               invention falls within that range, there is a presumption of obviousness” that
               may rebutted by showing (1) teaching away, or (2) unexpected results.

              Invention                                       Prior art

Obviousness – Range Cases

In re Harris, ____ F.3d ____ (Fed. Cir. 2005)(J. Rader – J. Clevenger
and SJ. Friedman) – p. 111

 Where Claimed Range Is Completely Covered by P/A, Prima
  Facie Obvious Even More Compelling
     – Nickel-based superalloy for turbine engine blades – 12
     – P/A – Overlapped all 12 elements – completely overlapped 11
     – No teaching away – No unexpected results
     – PTO rejection – AFF‟D
     – Fed. Cir. “[w]here the „claimed ranges are completely
       encompassed by the prior art, the conclusion [that the claims
       are prima facie obvious] is even more compelling than in
       cases of mere overlap.‟ ”
              Commercial Success

Merck & Co. v. Teva Pharms., Inc., 395 F.3d
1364 (Fed. Cir. 2005)(J. Gajarsa - J. Prost, dissenting J. Rader) – p.
 Commercial Success is Not a Factor Where Market
  Entry by Others is Barred by FDA – Developing Split
     – Method – treating osteporosis – administering once-weekly
       doses cmpd
     – Teva – obvious – Lunar News articles suggesting once-
       weekly doses close to claimed doses
     – Fed Cir – “about” means “approximately” – invalid
     – D Ct – Evid of commercial success
     – Fed Cir majority – Not a factor
     – Merck had another patent that precluded practicing the
       Lunar News method & FDA procedure gave Merck exclusive
       rts.                                                    36
            Commercial Success

Merck & Co. v. Teva Pharms., Inc. –
  − “Financial success is not significantly probative of that
      question [obviousness] in this case because others were
      legally barred from commercially testing the Lunar News
    – “[b]ecause market entry by others was precluded on those
      bases, the inference of non-obviousness of weekly-dosing,
      from evidence of commercial success, is weak. Although
      commercial success may have probative value for finding
      non-obviousness of Merck‟s weekly-dosing regimen in some
      context, it is not enough to show the claims at bar are
      patentably distinct from the weekly-dosing ideas in the Lunar
      News articles.”
         Commercial Success

Merck & Co. v. Teva Pharms., Inc. –
  – Denied petitions for re‟hrng & re‟hring en banc
  – J. Lourie dissented – joined by J. Newman & C.J.
  – J. Lourie – “[c]ommercial success is a fact
    question, and, once it is established, as found here
    by the trial court, the only other question is
    whether the success is attributable to the claimed
    invention („nexus‟), rather than to other factors
    such as market power, advertising, demand for all
    products of a given type, a rising economy that
    „lifts all boats,‟ etc.”
              Commercial Success
Syntex (U.S.A.) LLC v. Apotex, 407 F.3d 1371
(Fed. Cir. 2005)(J. Gajarsa - J. Clevenger, concurring J. Prost) – 118

 Evidence of Commercial Success is a Weak Factor
  Where Market Entry by Others is Barred by Other
  Patents: Disagreement Between Examiners May Be
  Evidence of Obviousness
     – Ophthalmic formulation – non-steriodal anti-inflammatory drug
       + preservative + surfactant (octoxynol 40 – known, but not in
       ophthalmic formulations)
     – Problem – preservatives didn‟t mix well w/ NASIDs
     – Surfactant – used to make insoluble chems soluble
     – Parent – rej‟d – art taught NASIDs + preservative + surfactant
       (but not octoxynol 40)
     – Syntex – declaration – unexpected results
     – Ex‟r not persuaded                                       39
          Commercial Success
Syntex (U.S.A.) LLC v. Apotex – Cont’d
  – Continuation – new ex‟r
  – Same rejection
  – Syntex – had shown in parent – unexpected results
  – Ex‟r allowed
  – Fed Cir – inconsistency between ex‟rs significant
  – Apotex – ANDA
  – D Ct – infringed & not invalid
  – Fed Cir – REV‟D – D Ct had not properly considered evid of
    obviousness – especially views of first ex‟r
  – Com‟l success – D Ct should re-evaluate in view of Merck –
    “Assuming that the active ingredient in the formulation was
    previously patented, the com‟l success of ACULAR may heavily
    derive from subject matter that does not on the whole      40
    contribute to the patentable distinctiveness of these claims.”
Enablement-Written Description-
          Best Mode

   Highlights
    – Divisions within court on the test for
      compliance with the written description
    – Best mode analysis tied to claimed

                      Enablement-Written Description-Best Mode

                                Written Description
   Test for Compliance
    – Vas-Cath, Inc. v. Mahurkar (1991)
        “Although the applicant does not have to describe
         exactly the subject matter claimed, the description
         must clearly allow persons of ordinary skill in the art
         to recognize that he or she invented what is claimed.
         The test for sufficiency of support * * * is whether
         the disclosure of the application reasonably conveys
         to the artisan that the inventor had possession at that
         time of the later claimed matter.”
    – “Possession of the invention” currently under attack by
      some on the court.
                       Enablement-Written Description-Best Mode
                               Written Description

   Test for Compliance
    – Regents v. Eli Lilly (1997)(J. Lourie – JJ. Newman
      & Bryson)
        Gene material identified only by a statement of
         function or result did not adequately describe
         the claimed invention
        Written description of genetic material “requires
         a precise definition, such as by structure,
         formula, chemical name, or physical properties.”

                         Enablement-Written Description-Best Mode
                                   Written Description

In re Wallach, 378 F.3d 1330 (Fed. Cir. 2004)(J. Lourie - JJ Mayer and
   Gajarsa) – 130
 Failure to Disclose Less Than a Complete DNA Sequence May Not
  Satisfy the Written Description Requirement
    – Discovery – 2 specific proteins isolated from human urine selectively
      inhibited cytotoxic effect of tumor necrosis factor- TBP-I and TBP-II
    – Disclosed – partial DNA sequences + molecular weight
    – Claimed – DNA molecules encoding those proteins
    – Brd – insufficient written description
    – Fed Cir – Aff‟d – “Appellants concede that it is now known that
      urinary TBP-II has a sequence of 185-192 amino acids. Without the
      approximately 95% of the amino acid sequence that Appellants did
      not disclose, we cannot say that the DNA molecules claimed in the
      „129 application have been described.”
    – Fed Cir - “[u]ntil Appellants obtained the complete amino acid
      sequence of TBP-II, they had no more than a wish to know the 44
      identity of the DNA encoding it.”
                 Enablement-Written Description-Best Mode
                         Written Description

Capon v. Eshhar, ___ F.3d ____ (Fed. Cir. 2005) –
  J. Newman, JJ. Mayer and Gajarsa - New
 Whether the Written Description Requirement
  is Satisfied Must Take Into Account the State
  of Scientific Knowledge
   patent-application interference
   chimeric gene - combined DNA segments -
    enhanced immune response
   Brd – w/o complete sequence – Lilly et al. – no
    written description support
   Fed Cir – Rev‟d – depends on tech.
                         Enablement-Written Description-Best Mode
                                   Written Description

Northpoint Tech., Inc. v. MDS-America, Inc., ___ F.3d
  ___ (Fed. Cir. 2005)(J. Bryson – J. Schall, concurring-in-part, dissenting-
  in-part J. Dyk) – 137
 Expert Testimony That “Elaborate Measures,” Not Described in
  the Patent, Were Required to Make the Claimed Invention Work
  Supports Conclusion That Claims are Invalid Due to Lack of
  Enabling Support
   – Method and apparatus for transmitting terrestrial signals on a
     common frequency with satellite transmissions
   – Jury - MDS infringed, but claims invalid as anticipated and non
   – Panel AFF‟D – expert testimony
   – J. Dyk – dissenting – experimentation not “undue”

            Enablement-Written Description-Best Mode
                                  Best Mode

   Best Mode
    – Unintentional omission of information
      known in the art is not deliberate
    – Best Mode – analyzed in terms of
      claimed invention

                         Enablement-Written Description-Best Mode
                                               Best Mode

   The Best Mode Requirement Is Not
    Violated by Unintentional Omission of
    Information That Would be Readily
    Known to Persons in the Field of the
     – High Concrete Structures
       v. New Enterprise, 377 F.3d
       1379 (Fed. Cir. 2004)(J. Newman - CJ.
       Mayer and J. Clevenger) – p. 142
            Tilt carrying heavy concrete
            Spec – can be rotated manually
            Inventors – depo – helps to use
             a crane
            No concealment of best mode                       48
                       Enablement-Written Description-Best Mode
                                                 Best Mode

Cardiac Pacemakers v. St. Jude,                    381 F.3d 1374
  (Fed. Cir. 2004)(J. Newman – SJ. Friedman and J. Rader) – p. 143
 The Best Mode Requirement Relates to Invention
  Disclosed and Claimed
   – Implantable cardiac defibrillators – could detect type of
   – Asked Honeywell to develop new battery – it did
   – Battery not disclosed or claimed – other batteries could be
   – Persons knowledgeable in the field would know where to
     get batteries
Particularly Point Out and Distinctly Claim
   What the Applicant Regards as His

    §  112(2) – Particularly Point Out and
     Distinctly Claim
     – Judged from perspective of one of
       ordinary skill in the art
     – Not invalid unless insolubly ambiguous

    Particularly Point Out and Distinctly Claim
   What the Applicant Regards as His Invention

Bancorp v. Hartford Life, 359 F.3d 1367 (Fed. Cir.
  2004)(J. Bryson – JJ. Rader and Prost) – p. 146
 If Claim is Not Insolubly Ambiguous, It is Not
  Invalid for Indefiniteness
   – System for tracking value of life insurance policies in separate
   – “surrender value protected investment credits” – not defined
     in patent & not a term of art
   – D Ct – invalid – indefinite
   – Fed. Cir. – REV‟D – “components of the term have well-
     recognized meanings, which allow the reader to infer the
     meaning of the entire phrase with reasonable confidence.”

        Particularly Point Out and Distinctly Claim
       What the Applicant Regards as His Invention

Howmedica Osteonics Corp. v.
 Tranquil Prospects, Ltd., 401 F.3d 1367
  (Fed. Cir. 2005)(J. Rader - JJ. Dyk and Prost) – p. 147
 A Claim is Definite if Its Legal Scope is Clear Enough
  That a Person of Ordinary Skill in The Art Could
  Determine Whether a Particular Product or Process
  Infringes or Not
   –   intramedullary prosthesis and method of implanting –
       hip joint
   –   Claim – 70% of “transverse sectional dimensions” of
       long bone
   –   ? “dimensions” refer to 1-D or 2-D
   –   D Ct – indefinite Fed Cir – REV‟D – one of ordinary skill
       in the art would understand from spec that
       “dimensions” referred to 2-D

       Particularly Point Out and Distinctly Claim
      What the Applicant Regards as His Invention

Marley Mouldings Ltd. v. Mikron Indus., Inc.,                ___
 F.3d ____ (Fed. Cir. 2005) J. Newman – JJ. Schall and Dyk
Claims Are Not Indefinite Even Though Tests Do Not
 Definitively Show Infringement or Non-Infringement
  –   Composite frame molding
  –   Claims – wood flour – “in parts (volume)”
  –   Equations – relating weigh & volume – depends on density
  –   Marley – inf – tests using lowest density spec sheet range
  –   Mikron – non-inf – tests using avg density
  –   Fed Cir – not indefinite – not insolubly ambiguous

       Particularly Point Out and Distinctly Claim
      What the Applicant Regards as His Invention

Datamize, L.L.C. v. Plumtree Software, Inc.,                ___ F.3d
 ____ (Fed. Cir. 2005) J. Prost, JJ. Clevenger and Bryson - NEW
“aesthetically pleasing” Renders Claims Indefinite:
 Some Objective Standard Must Appear in the Claims,
 Specification or Prosecution History
  –   software - authoring user interfaces - electronic kiosks
  –   Claims – “aesthetically pleasing look and feel for said interface
  –   Fed Cir – indefinite - “[s]imply put, the definition of
      „aesthetically pleasing‟ cannot depend on an undefined
  –   Look to claims – spec – prosecution history


Eli Lilly v. Aradigm,         376 F.3d 1352 (Fed. Cir. 2004)(J. Clevenger –
   J. Gajarsa, concurring J. Lourie) – p. 153
 One Claiming To Have Been Improperly Omitted As A Joint
  Inventor Must Show A Contribution To Conception Of The
  Claimed Invention, And That Showing Must Meet A “Clear And
  Convincing” Level Of Proof
   − Methods of aerosolized administration of insulin analogs
   − Fed. Cir. – pty claiming nonjoinder/misjoinder must meet
      heavy burden by “clear and convincing evidence” and “must
      provide evidence to corroborate the alleged joint inventor‟s
      conception * * *.”
Caterpillar, Inc. v. Sturman Indus., Inc., 387 F.3d 1358
   (Fed. Cir. 2005)(J. Prost – JJ. Newman and Dyk) – p. 155
 There Is a Presumption That Patents Name Correct Inventors

Legal Ethics & Inequitable Conduct

        – Changing standard of materiality

Legal Ethics & Inequitable Conduct

         The Elements
          – Materiality
          – Intent

    Legal Ethics & Inequitable Conduct

   Materiality – Evolving Standard
     –   Pre-1977 – ‟74 OG Guidelines – Rule 56 (appl. stricken if “fraud”) –
         Case law (generally related to patentability)
     –   1977 – “reasonable examiner” standard paraphrased from SEC
         disclosure standard for unsophisticated investors
     –   1982 – Claims may be rejected – appeal to Brd
     –   1983 – Renamed “P/A Statement” to “IDS”
     –   1987 – AIPLA “Blue Ribbon” Committee
     –   1988 – PTO Proposed Rule 57 – “but for” standard
     –   1988 – Kingsdown & Harita – PTO disbands “fraud squad” – will not
         investigate or reject
     –   1989 – Revised Rule 57 proposed – Comm‟r Quigg resigns
     –   1990 – Comm‟r Manbeck formally w/draws Rule 57
     –   1991 – Draft “new” Rule 56 announced
     –   1992 – “New” Rule 56 eff. March 16, 1992
     –   2000 – Duty to disclose “new” art in CIP                               58
    Legal Ethics & Inequitable Conduct

   “New” Rule 56
     –   Applies to applications & reexams pending & filed aft. 3/16/92
     –   Duty of disclosure applies to pending claims
     –   Duty satisfied if material art is cited by PTO or submitted to PTO
     –   Materiality
             Cumulative art not material
             Prima Facie Standard
                – Claim not patentable
                – Refutes/inconsistent w/ argument or position
                     Preponderance of the evidence standard
                     Terms given broadest reasonable construction
                     Before considering contrary evidence

   January 11, 2005 - CAFC panel adopts “new” Rule 56
   Does not reconcile prior cases “strongly suggesting”
    materiality standard of “new” Rule 56 does not apply 59to
Legal Ethics & Inequitable Conduct

   J.P. Stevens I (1984)
    – Inequitable conduct requires clear & convincing proof
    – Non-disclosed or false info must meet a “threshold”
      degree of materiality
   Hoffman-La Roche (2003)
    – Interpreted “New” Rule 56 as not a significant break
      in the previous “reasonable examiner” standard
   Dayco Products II (2003)
    – Final disposition the same under either materiality
      standard - pass on disposing of the issue – but also
      suggests “new” Rule 56 is not the standard        60
              Inequitable Conduct
            Which Standard Controls?

Bruno Indep. Living Aids, Inc. v. Acorn Mobility Servs.
  Ltd., 394 F.3d 1348 (Fed. Cir. 2005)(J. Lourie – JJ. Gajarsa and Linn) –
   p. 160
 A Panel of the Court Adopts the “Materiality” Standard of “New”
  Rule 56
    – Stairlift
    – P/A – Wecolator – similar stairlift mf‟d by 3/P
    – Urged stairlift was “Substantial Equivalent” to Wecolator when
      seeking FDA approval
    – Did not disclose Wecolator to PTO
    – D. Ct. invalid for IE – case “exceptional” for atty fees
    – Fed. Cir. – AFF‟D – Adopted “new” Rule 56 - Bruno knew or should
      have known of materiality
    – If Wecolator had been disclosed, Bruno could not have made
      argument during prosecution
                 Inequitable Conduct

Purdue Pharma L.P. v. Endo Pharms., Inc., 394 F.3d 1348
  (Fed. Cir. 2005)(SJ. Plager – JJ. Gajarsa and Linn) – p. 168
 Repeated Assertions of a “Surprising Discovery” May Constitute
  Inequitable Conduct When Not Based on Scientific Proof
   – Controlled release of oxycodone formulations
   – Purdue relied on “surprising discovery” to overcome §103 rejections
   – Inventor testified it was “insight,” rather than scientific proof, that
     formed basis of assertion
   – D. Ct. – p-i-s infringed, but unenforceable due to inequitable conduct
   – Fed. Cir. – absent statement re origin of “surprising discovery,”
     arguments enough of a “suggestion that clinical trials had been
     performed * * *.”
   – Fed. Cir. - “Purdue made a deliberate decision to withhold and thus
     misrepresent the origin of its „discovery‟ to the PTO.”
   – AFF‟D

             Inequitable Conduct

Bruno Indep. Living Aids, Inc. v. Acorn
 Mobility Servs. Ltd., 394 F.3d 1348 (Fed. Cir.
  2005)(J. Lourie – JJ. Gajarsa and Linn) – p. 171
 Inferred – Failure to Provide a Good Faith
  Reason for Nondisclosure May lead to an
  Inference of Intent to Deceive
  – Fed. Cir. – “Intent need not, and rarely can, be
    proven by direct evidence.”
  – “Rather, in the absence of a credible explanation,
    intent to deceive is generally inferred from the facts
    and circumstances surrounding a knowing failure to
    disclose material information.”
               Inequitable Conduct

Frazier v. Roessel Cine Photo Tech, Inc., ___ F.3d
  ____ (Fed. Cir. 2005) J. Linn – J. Dyk, concurring-in-part and
  dissenting-in-part J. Bryson - NEW
 Inferred – Allowing a Video to be Submitted to the
  PTO in Order to Represent the Capabilities of a Lens,
  Knowing That The Video Was Shot With a Different
  Lens is Sufficient to Infer Intent to Deceive
   – D Ct – Frazier – not credible – changed story
   – Fed Cir “[t]he district court‟s unchallenged findings establish
     that Frazier allowed a video to be submitted to the PTO in
     order to represent the capabilities of the claimed lens,
     knowing that portions of the video were shot with a different
     lens. The district court‟s finding of intent is not clearly
     erroneous on these facts.”

             Inequitable Conduct

Pharmacia Corp. v. Par Pharma., Inc., ___
  F.3d ____ (Fed. Cir. 2005) – J. Rader, JJ. Schall &
  Linn- NEW
 A Terminal Disclaimer Does Not Cause Inequitable
  Conduct in One Patent to Infect Another Patent: A
  High Degree of Materiality, in The Absence of a
  Credible Explanation, May Support an Inference of
  Intent to Deceive
   – Patent A – Ineq. Cond. – Declaration inconsistent
     w/ prior article by declarant – not disclosed
   – Patent B – ineq. cond. Not inferred b/c of term

              Inequitable Conduct

 A Plausible, Good Faith Explanation of Why
  Information Was Not Cited May Avoid a
  Finding of Intent to Deceive
  – Warner-Lambert Co. v. Teva Pharma. USA,
    Inc.,  ___ F.3d ____ (Fed. Cir. 2005) – J. Schall, JJ. Linn &
    Prost – New – Non-disclosed prior tests of competitive product
  – TAP Pharma. Products, Inc. v. OWL Pharma.,
    L.L.C.,___ F.3d ____ (Fed. Cir. 2005) – J. Bryson, JJ.
    Newman & Gajarsa – New – Prior art – Foreign search report

  Legal Ethics & Inequitable Conduct

Unitherm Food Sys. v. Swift-Eckrich, Inc.,
  375 F.3d 1341 (Fed. Cir. 2004)(J. Gajarsa - JJ. Schall and Linn)
  – p. 172
 A Walker Process -Type Antitrust Claim Requires
  Proof Not Only Of Fraud On the PTO, But The Other
  Elements Of A Sherman Act § 2 Claim As Well
   − Federal Circuit antitrust law centers on a single
     question: What behavior by the patentee in
     procuring or enforcing a patent can strip the
     patentee of antitrust immunity?
   – Found elements of Walker Process -type AT
     satisfied, but other elements – product market –
     for Sherman 2 claim not satisfied
            Reissue - Reexamination

N. Am. Container, Inc. v. Plastipak Packaging, Inc.,
   ___ F.3d ___ (Fed. Cir. 2005)(J. Lourie - JJ. Bryson and Linn) – p. 177
 Recapture Estoppel Applied
   – Blow-molded bottles
   – Prosecution – added “generally convex” - overcome §103
   – Reissue app – deleted “inner wall portions are generally
   – Protests - recapture - ex‟r – not “critical”
   – D. Ct. – claims invalid – violated recapture rule
   – Fed. Cir. – AFF‟D – ex‟rs denial of protests “demonstrates
     [his] inattention to the rule against recapture.”
                 Claim Construction

   Highlights
     Division among judges re strict application of
      the “ordinary meaning” of claim terms
          Refusal to limit claims to disclosed embodiment(s),
           unless clear statements that invention is so limited
          May be ltd to spec when claim is “ambiguous”
          BUT some judges rebelling – claims should be ltd to
           actual invention
     Phillips v. AWH – anti-climatic – but does
      case signal narrower construction?

                  Claim Construction

   Johnson Worldwide v. Zebco 1999
   Renishaw v. Marposs 1998
     – Focus on “ordinary meaning” of the claims
   Trend – 1997 – most of 2001 – limit claims b/c of written
     – Wang Labs. v. AOL
     – SciMed v. Advanced Cardiovascular Systems
     – Netword v. Centraal Corp.
     – Toro v. White Consolidated
     – Bell Atlantic v. Conrad
   Trend – 2002-2003 – refocus on “ordinary” meaning
     – CCS Fitness, Inc. v. Brunswick Corp.
     – Teleflex, Inc. v. Ficosa North America Corp.
     – Texas Digital v. Telegenix
   2003-2005 – Some Judges – what is the invention?
   2005+ - Phillips v. AWH ?                                   70
        Claim Construction

– Cases generally emphasizing claim language –
  not ltd by specification

                    Claim Construction

Nystrom           v. TREX,       374 F.3d 1105 (Fed. Cir. 2004)(J. Linn and
CJ. Mayer, dissent J. Gajarsa) – p. 187
    – “a board”
    – D Ct – wood
    – Dictionary def‟s – “wood” or other
      rigid material
    – Maj – not ltd to “wood”
            J. Gajarsa – when multiple
             definitions are conflicting – look to
             intrinsic evid – Novartis v. Eon
    – Maj – Construction should add all
      definitions – found support in spec
      – although tenuous – Novartis
      cannot override earlier panel
      opinions                                                          72
               Claim Construction

   Numeric Ranges From Specification Examples Do
    Not Represent a Disavowal of the Common
    Meaning of the Term
     – Unitherm Food Sys. v. Swift-Eckrich, Inc.,
      375 F.3d 1341 (Fed. Cir. 2004)(J. Gajarsa – JJ. Schall and
      Linn) – p. 190
          ConAgra urged that Unitherm process not the same
           b/c it did not produce “golden-brown color”
          D. Ct. concluded that patentee did not act his on
          Reference to “Hunter-Lab Color Meter”
           measurements to describe color merely “examples”
          No disavowal of common meaning                          73
                    Claim Construction

W.E. Hall v. Atlanta
  Corrugating, 370 F.3d 1343
   (Fed. Cir. 2004) (J. Gajarsa – JJ.
   Linn and Prost) – p. 191
 If the Written Description or
  Prosecution History are
  Ambiguous as to Whether a
  Patentee Used a Term
  Consistent with the Ordinary
  and Custom Meaning, the
  Ordinary and Customary
  Meaning Prevails
   – “ribs defining a * * *
       plurality of open channels

             Claim Construction

W.E. Hall v. Atlanta Corrugating –
  – Argued over p/a Nyssen pipes – didn‟t need element 30

             Claim Construction

W.E. Hall v. Atlanta Corrugating –
  – Arguments during prosecution – clear meaning of “open”

     Claim Construction - Summary

 Housey Pharms. v. Astrazeneca,                  366 F.3d 1348 (Fed.
  Cir. 2004)(J. Clevenger - CJ. Mayer, dissenting J. Newman) – p. 194
   – The plain meaning of claim terms control even though the
     result is that the claims concededly are invalid and non-
   – Split – plain meaning v. read in the context of the spec
 Vanderlande Ind. V. U.S. ITC, 366 F.3d 1311 (Fed. Cir.
  2004) – (J. Michel – JJ. Gajarsa and Linn) – p. 195
   – General-usage dictionaries are irrelevant where there is
     evidence that artisans in the field would attach a special
     meaning to a claim term, or no meaning at all

     Claim Construction - Summary

 TI Group v. Automotive,                    375 F.3d 1126 (Fed. Cir.
  2004)(J. Prost – J. Gajarsa, dissent J. Bryson) – p. 198
   – The plain meaning of “reservoir” and “within” avoids
 Mars, Inc. v. H.J. Heinz, 377 F.3d 1369 (Fed. Cir.
  2004)(J. Dyk – JJ. Schall and Prost) – p. 200
   – “Containing” and “Mixture” are open-ended terms that do
     not exclude the presence of unlisted ingredients

     Claim Construction - Summary

 Innova/Pure Water v. Safari Water, 381 F.3d 1111 (Fed.
  Cir. 2004)(J. Clevenger – JJ. Rader and Linn) – p. 202
   – It is a bedrock principle of patent law that the claims of a
     patent define the invention to which the patentee is entitled
     the right to exclude

 Home Diagnostics v. LifeScan, 381 F.3d 1352 (Fed. Cir.
  2004) (J. Rader – JJ. Dyk and Prost) – p. 206
   – Preferred embodiment does not alone undermine customary
     meaning and scope of the claim language

                Claim Construction

Eolas Techs. v. Microsoft, 399 F.3d 1325 (Fed.
  Cir. 2005)(J. Rader – JJ. Friedman and Plager) – p. 208
 Absent a Disclaimer, Claims Are Not Limited to the
  Embodiment Disclosed in the Specification
   – Drawn to a “distributed hypermedia method” - allowed a user
     to operate a web browser in an interactive environment
   – Claims – “executable application”
   – D Ct – “any computer code *** that is launched” – includes
   – Microsoft - spec described only standalone programs
   – Fed. Cir. – no clear disclaimer – embodiments in spec do not
     limit broader claim language
                Claim Construction

Gemstar-TV Guide Int’l v. ITC, 383 F.3d 1352
  (Fed. Cir. 2004)(J. Linn and J. Clevenger) – p. 210
 Statement in Specification that “innovative cursor ***
  is required” Does Not Limit Claim to Such a Cursor
   – Interactive program guides
   – Claims – “visual identification”
   – Spec – “an innovative cursor *** is required ***.”
   – ITC - “innovative cursor” was required & ltd “visual
     identification” to that cursor
   – Fed. Cir. - error – Spec simply described advantages of
     “innovative cursor”
                 Claim Construction

NTP, Inc. v. Research In Motion, Ltd.,                    ___ F.3d
  ___ (Fed. Cir. 2005)(J. Linn – JJ. Michel and Schall) – p. 211
  (new opinion – this portion unchanged)
 Statement in Specification that “electronic mail
  system” is “basically” a Wireline System Together With
  Drawing Figure Illustrating Wireless Link Indicates
  System May Be Wireless
   – Claims “electronic mail system”
   – D. Ct. - willful infringement
   – RIM - “electronic mail system” should be limited to “wireline”
   – Fed. Cir. disagreed
       Spec – “basically” a wireline system – dwg showed
         wireless link                                            82
       Fed Cir – “basically” means could include wireless
                   Claim Construction

   Playtex Prods., Inc. v. Proctor &
    Gamble Co., 400 F.3d 901 (Fed. Cir. 2005)(J. Gajarsa –
    JJ. Lourie and Linn) – p. 213
     – “Substantially” is a Descriptive Term Commonly
       Used in Patent Claims to Avoid a Strict Numerical
       Boundary to the Specified Parameter

   Asyst Techs. v. Emtrak, Inc.,                     402 F.3d 1188
    (Fed. Cir. 2005)(J. Bryson – CJ. Michel and J. Newman) – p. 215
     – The Phrase “mounted on” Given its Ordinary
       Meaning” – a Conclusory Expert Opinion Does not
       Override Ordinary Meaning                     83
         Claim Construction

– Cases generally emphasizing specification

               Claim Construction
             Limited by Specification

Metabolite Labs, Inc. v. Lab. Corp. of Am.
 Holdings, 370 F.3d 1354 (Fed. Cir. 2004)(J. Rader – SJ.
   Friedman, dissenting-in-part & concurring-in-part J. Schall) – p. 252
 Reading Claim “in the context of” the Specification May Result
  in a Broader Construction Than Warranted by the Claim
    – Methods of detecting B vitamin deficiency
    – “correlating an elevated level of * * * homocysteine * * * with
      deficiency of cobalamin or folate.”
    – Panel Majority – “correlating” means relating homocysteine levels
      to presence or absence of a vitamin deficiency
    – J. Schall dissenting – panel‟s construction “expands the scope of
      claim 13 beyond the actual words of the claim.”
    – Claim limited to “elevated” levels – 80-84% of tests shows
      “unelevated” levels – damages should be reassessed.

                Claim Construction
              Limited by Specification
Irdeto Access v. Echostar, 383 F.3d 1295 (Fed. Cir. 2005)(J.
  Michel – JJ. Newman and Bryson) – p. 254
 Where a Disputed Term Lacks an Accepted Meaning in the Art, There is
  no “Heavy Presumption” of Ordinary Meaning
   – Method of controlling broadcast of enciphered info using “service
      keys” – “group keys” – “box keys”
   – ? whether “group keys” included less than all subscribers
   – Terms had no accepted meaning in the art
   – “Having conceded that the „key‟ modifiers have no accepted meaning
      in the art, the applicant expressly directed the public to the
      specification to discern that meaning and thus measure the scope of
      the claimed invention. And while the specification does not contain
      any statements of explicit disavowal or words of manifest exclusion,
      it repeatedly, consistently, and exclusively uses „group‟ to denote
      fewer than all subscribers, manifesting the patentee‟s clear intent to
      so limit the term.”

Claim Construction
Limited by Specification

AstraZeneca AB v. Mutual Pharms. Co., 384
  F.3d 1333 (Fed. Cir. 2004)(J. Michel – SJ. Archer and J.
  Bryson) – p. 258
 Specification May Always be Consulted to Confirm
   – AZ – 2 patents - felodipine - PLENDIL® - treating
   – Mutual – ANDA – generic felodipine
   – “a solution or dispersion of an effective amount of the
     active compound in a semi-solid or liquid nonionic
   – Artisans - understand - “solubilizer” - 3 types of chemicals:
     (1) surface active agents (also known as “surfactants”),
     (2) co-solvents, and (3) complexation agents.
   – Mutual - “solubilizer” per spec - only surfactants
Claim Construction
Limited by Specification

 AstraZeneca AB v. Mutual Pharms. Co. –
  – “A long line of cases indicates that evidence intrinsic to the
    patent -- particularly the patent‟s specification, including
    the inventors‟ statutorily-required written description of
    the invention -- is the primary source for determining
    claim meaning.”
  – “Language in some of our recent cases suggests that the
    intrinsic record, except for the claims, should be consulted
    only after the ordinary and customary meaning of claim
    terms to persons skilled in the pertinent art is
    determined.” - Texas Digital
  – “Under this approach, where the ordinary meaning of a
    claim is evident, the inventor‟s written description of the
    invention, for example, is relevant only insofar as it
    provides clear lexicography or disavowal of the ordinary
    meaning.”                                                    88
Claim Construction
Limited by Specification

 AstraZeneca AB v. Mutual Pharms. Co. –
  – No need to decide which approach here.
  – Inventors acted as lexicographers.
  – “Description of the Invention” - “[t]he solubilizers suitable
    according to the invention are defined below”
  – “[t]he solubilizers suitable for the preparations according
    to the invention are semi-solid or liquid non-ionic surface
    active agents”
  – AZ - preferred embodiments of “suitable” solubilizers.
  – Might agree if “a solubilizer suitable for the preparations
    according to the invention,”
  – But – spec - “the solubilizers suitable for the preparations
    according to the invention”                                  89
             Claim Construction
           Limited by Specification

Fuji Photo Film Co. v. ITC, 386 F.3d 1095 (Fed. Cir.
  2004)(J. Bryson – JJ. Clevenger and Linn) – p. 260
 Claims Must Be Read in the Context of the
  Specification of Which They Are a Part
   – Drawn to “single use” or “disposable” 35 mm file camera
   – ITC construed “opening” as “hole, breach, or aperture”
   – Fuji urged “opening” be construed broader, i.e., “[a]n
     open space serving as a passage or gap” or an
     “unobstructed or unoccupied space or place”
   – Use of “opening” throughout patent strongly suggested
     “hole, breach, or aperture”
   – Relied on description in spec

              Claim Construction
            Limited by Specification

Boss Control, Inc. v. Bombardier, Inc.,
  ___ F.3d ___ (Fed. Cir. 2005)(J. Prost – JJ. Shall and Gajarsa) – p.
 Where Specification Gives Claim Term a
  Special Definition, That Definition Controls
   – Power interrupt system
   – Accused products – watercraft & snowmobiles
   – Fed. Cir. – spec distinguished “interrupt” between on-off
     interruption & interruption in two stages
   – Accused device did not maintain elec connection once pwr
     supply interrupted
   – Fed. Cir. – AFF‟D – “* * * the intrinsic evidence binds Boss
     to a narrower definition of „interrupt‟ than the extrinsic
     evidence my support.”                                      91
              Claim Construction
            Limited by Specification
C.R. Bard, Inc. v. United States Surgical, Inc.,
  388 F.3d 858 (Fed. Cir. 2004)(J. Michel - J. Newman, concurring J.
  Prost) – p. 264
 Certain Sections of the Specification, Such As The
  Summary of the Invention, Are More Likely to Contain
  Statements Limiting the Scope of the Invention
   – Mesh “plug” w/ conformable surface – hernias
   – “the surface of said hollow plug being conformable to
     irregularities” and “said hollow plug being extremely pliable”
   – Spec - “[t]he implant includes a pleated surface which
     increases the pliability of the implant, allowing the prosthesis
     to conform to irregularities in the tissue or muscle wall
     surrounding the opening.”
   – D Ct - plug must contain “pre-formed pleats.”
   – Fed Cir – AFF‟D
          Claim Construction
        Limited by Specification

C.R. Bard, Inc. v. United States Surgical,
Inc. – Cont’d
– “A long line of cases indicates that the intrinsic record is
  the primary source for determining claim meaning.”
– “Language in some of our recent cases, however, suggests
  that the intrinsic record, except for the claims, should be
  consulted only after the ordinary and customary meaning
  of claim terms to persons skilled in the pertinent art is
– “Bard cites these cases in a failed attempt to contend that
  dictionary definitions somehow trump or override the
  intrinsic record in determining the meaning of a claim
– “Like the many other litigants who have advanced such a
  position, Bard extracts dicta from these cases that is taken
  out of context.”                                             93
                 Claim Construction
               Limited by Specification

   C.R. Bard, Inc. v. United States Surgical,
    Inc. – Cont’d
           “[B]oth the specification and the prosecution history require
          that the plug in claim 20 be pleated.”
         Summary of the Invention - “[t]he implant includes a pleated
         Abstract - “[a]n implantable prosthesis including a conical
          mesh plug having a pleated surface”
         “certain sections of the specification are more likely
          to contain statements that support a limiting
          definition of a claim term than other sections”
         “specification explicitly defines the inventive plug as „having‟
          or „including] a pleated surface.‟ ”
    – J. Prost – Concurring – Prosecution history supports construction
      – would not reach other points.
               Claim Construction
             Limited by Specification

V-Formation, Inc. v. Benetton Group SpA,
   401 F.3d 1307 (Fed. Cir. 2005)(J. Rader – JJ. Mayer and Prost)
   - p. 266
 Prior Art Listed in a Patent is Part of the Intrinsic Record and
  May Be Used to Guide Claim Interpretation
    – Inline roller skates having modular construction
    – “a plurality of fasteners for releasably attaching said first and
      second sidewalls to respective ones of said toe and heel plate
      flange pairs”
    – D. Ct. - “releasably attaching” - fasteners “must permit the
      sidewalls to be easily removed and replaced”
    – Accused device - rivets
    – D. Ct. relied on ref listed on face of patent which taught plates
      were “permanently attached” through use of rivets
    – D. Ct. – not infringed
    – AFF‟D
              Claim Construction
            Limited by Specification
ASM America, Inv. v. Genus, Inc., 401 F.3d
  1340 (Fed. Cir. 2005)(J. Bryson – SJ. Friedman and J.
  Newman) – p. 268
 A “Definition” of a Term in the Specification is
  Subject to Interpretation
   – Atomic Layer Deposition – req‟d removing reactant gas – either
     (1) sucking, or (2) blowing – stream of inert gas
   – Spec - “evacuation of reaction space” defined in spec as
     “pumping gas * * * to a sufficiently high vacuum” and “may be
     simultaneously filled with an inactive gas which promotes
     purging * * * from the reaction space”
   – ASM - “evacuation” meant any process that removed reactant
     gases from the reaction chamber.
   – D. Ct. – ltd to “sucking” the gasses out of the reaction space –
     Not Infringed
   – Fed. Cir. – AFF‟D – spec indicated that purging was in addition to
              Claim Construction
            Limited by Specification
Rhodia Chimie v. PPG Indus., Inc., 402 F.3d 1371 (Fed.
  Cir. 2005)(J. Gajarsa – JJ. Newman and Clevenger) – p. 272
 Claims May Be Limited by Example in the Specification
   – Spheroidal precipitated silica particulates used as filler to
     reinforce elastomeric prods – like auto tires
   – “dust-free and non-dusting, * * * atomized precipitated silica
   – Dispute - “dust-free and non-dusting”
   – PPG - literal construction – no dust
   – Rhodia - “very low dust”
   – D. Ct. – spec - German DIN 53 583 standard – spec examples
     gave specific dust levels – Not Infringed
   – Fed. Cir. – AFF‟D – “[b]ecause the only measurement of the
     dust produced by Examples 5 and 10 was articulated in terms
     of the DIN *** standard, the district court properly
     incorporated that articulation into its construction ***.” 97
Claim Construction

Phillips v. AWH Corp. -
 Rehearing en banc GRANTED – July 21, 2004
 En banc opinion – July 12, 2005

 Claim Construction

Phillips v. AWH Corp., - Rehearing en banc GRANTED – July 21,
  2004: - p. 217
   – 1. Is the public notice function of patent claims better served by referencing
     primarily to technical and general purpose dictionaries and similar sources to
     interpret a claim term or by looking primarily to the patentee‟s use of the
     term in the specification? If both sources are to be consulted, in what order?
           2 questions
   – 2. If dictionaries should serve as the primary source for claim interpretation,
     should the specification limit the full scope of claim language (as defined by
     the dictionaries) only when the patentee has acted as his own lexicographer
     or when the specification reflects a clear disclaimer of claim scope? If so,
     what language in the specification will satisfy those conditions? What use
     should be made of general as opposed to technical dictionaries? How does
     the concept of ordinary meaning apply if there are multiple dictionary
     definitions of the same term? If the dictionary provides multiple potentially
     applicable definitions for a term, is it appropriate to look to the specification
     to determine what definition or definitions should apply?                       99
           6 questions
Claim Construction

Phillips v. AWH Corp. - Cont’d
  – 3. If the primary source for claim construction should be the
    specification, what use should be made of dictionaries? Should the
    range of the ordinary meaning of claim language be limited to the
    scope of the invention disclosed in the specification, for example,
    when only a single embodiment is disclosed and no other indications
    of breadth are disclosed?
         2 questions
  – 4. Instead of viewing the claim construction methodologies in the
    majority and dissent of the now-vacated panel decision as
    alternative, conflicting approaches, should the two approaches be
    treated as complementary methodologies such that there is a dual
    restriction on claim scope, and a patentee must satisfy both limiting
    methodologies in order to establish the claim coverage it seeks?
         1 question
 Claim Construction

Phillips v. AWH Corp. - Cont’d
   – 5. When, if ever, should claim language be narrowly construed for the sole
     purpose of avoiding invalidity under, e.g., 35 U.S.C. §§ 102, 103 and 112?
           3 questions
   – 6. What role should prosecution history and expert testimony by one of
     ordinary skill in the art play in determining the meaning of the disputed claim
           1 question
   – 7. Consistent with the Supreme Court‟s decision in Markman v. Westview
     Instruments, Inc., * * * and our en banc decision in Cybor Corp. v. FAS
     Technologies, Inc., * * * is it appropriate for this court to accord any
     deference to any aspect of trial court claim construction rulings? If so, on
     what aspects, in what circumstances, and to what extent?
           2 questions

Claim Construction

Phillips v. AWH Corp. - Cont’d
  – Judge Rader:
       Is claim construction amenable to resolution by resort to strictly
        algorithmic rules, e.g., specification first, dictionaries first, etc.?
        Or is claim construction better achieved by using the order or
        tools relevant in each case to discern the meaning of terms
        according to the understanding of one of ordinary skill in the art
        at the time of the invention, thus entrusting trial courts to
        interpret claims as a contract or statute?
           – 2 questions
  – Overall – some 19 en banc questions + permutations

Claim Construction

Phillips v. AWH Corp. – Cont’d
  – CJ. Mayer – dissent:
      Until the court is willing to reconsider its holdings in
        Markman v. Westview Instruments, Inc., * * * and
        Cybor Corp. v. FAS Techs., Inc., * * * that claim
        construction is a pure question of law subject to de novo
        review in this court, any attempt to refine the process is

Claim Construction

Phillips v. AWH Corp., ___ F.3d ___ (Fed. Cir.
  2005)(en banc)(J. Bryson) – p. 218
  Vandalism resistant walls
  Spec – “baffles” – (1) deflect bullets, (2) increase
  load bearing

Claim Construction

Phillips v. AWH Corp. - Cont’d
   Claim – “means disposed inside the shell for
    increasing its load bearing capacity comprising
    internal steel baffles extending inwardly from the
    steel shell walls.”
    – D Ct - § 112(6)
    – Panel opinion (J. Lourie w/ J. Newman) – “baffle”
      sufficient structure to avoid m-p-f
    – Panel opinion – disposed at angles other than 90 deg.
    – J. Dyk – dissent – “baffle” should not be so ltd.
    – Panel majority – only embodiment disclosed              105
Claim Construction

Phillips v. AWH Corp. - Cont’d
   En Banc Opinion – all except J. Mayer
    – Part I – Not m-p-f under § 112(6)
    – Part II A – words given their ordinary & customary meaning
      as understood by one of ordinary skill in the art
    – Part II B(1) – look first to the language of the claim and
      context in which words are used
    – Part II B(2) – appropriate to “rely heavily” on spec
    – Part II B(3) – appropriate to rely on prosecution history, but
      less reliable
    – Part II C – extrinsic evid – including dictionaries etc. – may be
      used by less reliable than intrinsic record
    – Part III – Texas Digital went too far in elevating dictionaries
      etc. as first step in claim construction
Claim Construction

Phillips v. AWH Corp. - Cont’d
   En Banc Opinion
    – Part IV A – “baffle” not ltd to one at acute/obtuse angle
    – Part IV B – maxim that claims construed to preserve validity
      ltd to cases where meaning is ambiguous
    – Part V – trade secret claim barred by statute of limitations
    – Part VI – unnecessary to revisit Cybor
    – J. Lourie (w/ J. Newman) – did not join Part IV – “claims need
      not necessarily be limited to specific or preferred
      embodiments *** although they are limited to what is
      contained in the overall disclosure of the specification.”
    – J. Mayer (w/ J. Newman) – Cybor – wrong – “The court‟s
      opinion today is akin to rearranging the deck chairs on the
      Titanic – the orchestra is playing as if nothing is amiss, but
      the ship is still heading for Davey Jones‟ locker.”          107
Claim Construction

Phillips v. AWH Corp. - Cont’d
   En Banc Opinion – Points Emphasized
    – Claims define right to exclude
    – Claims given ordinary & customary meaning as understood by
      one of ordinary skill in the art – Query – how determined?
    – One of ordinary skill in the art reads claims in context of
      specification & prosecution history
    – Role of spec – “It is therefore entirely appropriate for a court
      *** to rely heavily on the written description for guidance as
      to the meaning of the claims.”
           Adopted position urged by PTO, FTC & DoJ
           Other amicus (e.g., ABA, AIPLA) urged balanced approach

Claim Construction
Phillips v. AWH Corp. - Cont’d
   En Banc Opinion – Query – Written Description
    – Univ. of Rochester (2004) – J. Lourie w/ JJ. Bryson & Dyk
           (1) emphasized WD requirement separate & distinct from
            enablement; (2) one may be satisfied w/o satisfying the other;
            (3) characterized WD as providing a “public notice” function.
    – Enzo Biochem (2002) – J. Lourie w/ JJ. Dyk & Prost
           “Even if a claim is supported by the specification, the language
            of the specification *** must describe the claimed invention so
            that one skilled in the art can recognize what is claimed.”
    – Rochester – cites In re [Wm] Moore (CCPA 1946)
           It “is well-settled that claims in an application which are broader
            than the applicant‟s disclosure are not allowable”
    – And In re Sus (CCPA 1962) – aff‟g rej – claims‟ “failure to
      meet the requirements of *** [§ 112] in that they are      109
      broader than the invention described in the written
      description ***.”
Claim Construction
Post - Phillips v. AWH Corp. – Cases
   Pause Technology LLC v. TiVo Inc., ___ F.3d
    ____ (Fed. Cir. 2005) J. Linn, JJ. Newman and Lourie – NEW
    The Court Cannot “Ignore” Words in a Claim
    – DVRs – “circular storage buffer”
    – TiVo - ltd to physical addressing - buffer stored newest values
      by writing over values stored at oldest physical addresses
    – Claim – “to write over the oldest of said input signal values
      recorded in said digital memory”
    – Fed Cir – Cannot ignore explicit claim language

Claim Construction
Post - Phillips v. AWH Corp. – Cases
   Pause Technology LLC v. TiVo Inc., Cont’d
    Courts Cannot “Rewrite” Claims, But Can Use Words Not
      Appearing in a Claim in Clarifying the Meaning So Long As
      The Resulting Interpretation Accords With the Original Claim
    – D Ct – “a physical memory device that contains digital signal
      values and that is circular in the sense that when the last
      address is reached, the next address accessed is the first
      address location. While the digital input signal values are
      always stored in the same repeating physical addresses, these
      addresses do not have to be physically contiguous. The
      “circular buffer limitation” requires that the circular buffer
      store the digital input signal values in continually advancing
      physical addresses.”
    – Fed Cir – OK – stayed true to original claim language          111
Claim Construction
Post - Phillips v. AWH Corp. – Cases

   Research Plastics, Inc. v. Federal
    Packaging Corp., ___ F.3d ____ (Fed. Cir. 2005) – J.
    Gajarsa, JJ. Newman and Bryson– NEW
    “Rear End” Impermissibly Narrowed to Outer Most
    – Caulking tubes w/ ribs
    – Claims – ribs extended to “rear end” of hollow body
    – Fed Cir – “rear end” = rear edge not just rear

Claim Construction
Post - Phillips v. AWH Corp. – Cases

   Terlep v. Brinkmann Corp., ___ F.3d ____ (Fed.
    Cir. 2005) – J. Linn, JJ. Bryson and Gajarsa – NEW
    “Clear” Means “Transparent” and Excludes
    –   “omnidirectional” LED lamp
    –   Claims – “a first clear plastic tubular holder”
    –   Terlep – includes translucent
    –   Fed Cir – NO – Spec - “Summary of the Invention” - patentee
        had “implicitly” drawn a distinction between lenses or holders
        that diffused light and those that transmitted light.

Claim Construction
Post - Phillips v. AWH Corp. – Cases
   CollegeNet, Inc. v. ApplyYourself, Inc., ___
    F.3d ____ (Fed. Cir. 2005) – J. Rader, JJ. Lourie and Schall –
    “A Format Specified By The Institution” Does Not
      Require an Unlimited Number of Formats:
      “Automatically” Does Not Exclude Human
    – Processing college appl. Forms – (1) stored data for multiple
      applications, (2) colleges could retrieve in selected format
    – D Ct – “a file format” = “any file format” = an unlimited
      number of formats
    – Fed Cir – No – spec listed 5 exemplary formats – “one or
      more” file formats
    – “automatically” did not exclude human initiation
Claim Construction
Post - Phillips v. AWH Corp. – Cases
   AquaTex Indus., Inc. v. Techniche
    Solutions, ___ F.3d ____ (Fed. Cir. 2005) – J. Mayer, JJ.
    Gajarsa and Dyk – NEW
    Claim May Be Limited By Patents Incorporated By
    – Multi-layered, liquid-retaining composite material
      comprising, inter alia, “fiberfill batting material.”
    – ? whether ltd to synthetic fibers, or whether could
      include synthetic and natural materials.
    – Techniche used commercially available material
      Vizorb® - both synthetic and natural materials
    – Ltd to synthetic materials – only examples in spec    115

      + patents incorporated by ref only synthetic
                 Claim Construction
                 Procedure - Waiver
NTP, Inc. v. Research In Motion, Ltd., 392
  F.3d 1336 (Fed. Cir. 2004)(J. Linn – JJ. Michel and Schall) – p.
 Presenting a Proposed Claim Construction on
  Appeal Which Alters Claim Scope Invokes the
  Doctrine of Waiver
   – On appeal, RIM argued that “electronic mail
     system” should be limited to “pull” tech
          Fed. Cir. -
             – “Because RIM failed to raise before the district
               court the argument that the claim should be
               limited to pull technology, the argument was
               waived, and we decline to address it on the
               merits.”                                           116

          But ct has not strictly enforced waiver
               Claim Construction
               Procedure - Waiver
Harris Corp. v. Ericsson Inc., ___ F.3d ____ (Fed. Cir.
  2005) – J. Prost w/ J. Clevenger, dissenting opinion – J. Gajarsa -
 Federal Circuit Law Controls the Issue of Waiver in the
  Context of Claim Construction: Panel Majority Accused
  of Introducing an “Oops I Forgot” Exception to Waiver
   – Communications system – “intersymbol interference”
   – “time domain processing means” - § 112(6)
   – “corresponding structure” – “symbol processor 37”
   – On appeal – Ericsson – WMS Gaming – must include algorithm
     – not previously argued
   – Panel majority – (1) Federal Circuit law controls waiver; (2) not
     waived because “same concept” argued below
   – J. Gajarsa – waived – E had 10 opportunities to make argument
                Claim Construction
                Procedure - Waiver
SanDisk Corp. v. Memorex Products, Inc., ___
  F.3d ____ (Fed. Cir. 2005) – J. Gajarsa, JJ. Rader and Dyk- p. 309
 Equity Does Not Favor Applying Judicial Estoppel To
  “Evolving” Claim Construction Arguments After A
  Preliminary Injunction
   – Flash EEprom
   – Earlier litigation – another party – construction – judgment
   – Present litigation – sought injunction
   – D‟s – SanDisk ltd to earlier claim construction
   – Fed Cir – not necessarily
   – Judicial estoppel factors - (1) later position “clearly inconsistent”
     w/ earlier position; (2) court adopted earlier position; (3) unfair
     advantage or unfair detriment – here not “clearly inconsistent”
   – Fed Cir – construction – interlocutory – ct can revisit after full
     record following preliminary injunction.                      118
                  Claim Construction
Nazomi Communications, Inc. v. ARM Holdings,
  PLC., 403 F.3d 1364 (Fed. Cir. 2004)(J. Rader – CJ. Michel and J.
  Prost) – p. 282
 Where the District Court Does Not Properly Analyze Claim
  Construction and/or Infringement, the Case Must be Remanded:
  (2) Although Review is De Novo, the Federal Circuitry Does Not
  Undertake Claim Construction Without a District Court‟s Analysis
    – Java accelerator – hardware
           Disputed “instructions”
           D Ct – gave no analysis for its construction
           ARM – Fed Cir reviews de novo – should decide
            construction & infringement – D Ct‟s views “does not
           Fed Cir – reviews de novo – but “takes into account the
            views of the trial judge ***.”
              Claim Construction
Power Mosfet Techs. v. Siemens,                   378
  F.3d 1396 (Fed. Cir. 2004)( J. Gajarsa – JJ. Michel
  and Prost) – p. 201
 A Claim Construction Focusing on Individual Words in
  a Claim May Not Resolve All Ambiguities; A Court
  May Then Have to Resolve Those Ambiguities Within
  the Context of the Claim as a Whole in Deciding
   – D Ct adopted SM‟S Markman report
   – Construction of individual words in report did not
     resolve infringement issue
   – Fed Cir - D Ct properly resolved infringement issue
     by interpreting claims as a whole w/ prior
     construction of individual words
                Claim Construction
               Claim Differentiation
Seachange Int’l , Inc. v. C-COR, Inc., __ F.3d ___             (Fed.
  Cir. 2005)(J. Linn – JJ. Bryson and Gajarsa) – p. 276
 (a) Presumption That Claims are of Different Scope May Be
  Rebutted by the Prosecution History (b) Grouping Claims and
  Arguing Patentability May Lead to a Narrower Construction
   – Video servers - video-on-demand – problem – storage space
   – D. Ct. - “network for data communications” = computer sys
      using “any kind of network”
   – Cls 1 & 37 different – cl 37 not ltd to point-to-point network
   – Doctrine supports broad construction
   – However, not hard/fast rule – “and will be overcome by a
      contrary construction dictated by the written description or
      prosecution history”
   – Fed. Cir. – patentee groped claims & relied on “point-to-point”
      limitation to overcome p/a – “it would be improper to now
      broadly construe [the claim] not to contain those limitations.”
   – REV‟D                                                       121
          Claim Construction
    Reliance on Prosecution History
   Examiner’s Reasons for Allowance
Salazar v. Procter & Gamble Co., ___F.3d ___
  (Fed. Cir. 2005)( J. Rader – J. Gajarsa, dissenting opinion J.
  Bryson) – p. 288
 An Applicant‟s Failure to Respond to an Examiner‟s
  Statement in the Reasons for Allowance Concerning a
  Claim Limitation Does Not Lend to a Disavowal
   – Toothbrush w/elastic stimulator & elastic polishing rods
   – Ex‟r - p/a = nylon – not “elastic”
   – Applicant – no response
   – D. Ct – ltd per exr‟s stmt
   – P&G prod not elastic therefore not infringing
   – Fed. Cir. - applicant‟s silence re exr‟s statement on
     allowance “without more, cannot amount to a „clear and
     unmistakable disavowal‟ of claim scope * * * After all, the
     applicant has disavowed nothing.”
   – Distinguished prior cases on facts                          122
           Claim Construction
     Reliance on Prosecution History

Goldenberg v. Cytogen, 373 F.3d 1158 (Fed. Cir.
  2004)(J. Gajarsa – J. Schall, concurring-in-part, dissenting-in-
  part J. Prost) – p. 295
 A Related Patent or its Prosecution History May Be Relied on to
  Construe the Claims of a Patent-at-Issue Only if the Patents
  Have a Familial Relationship
   – Cannot rely on prosecution history of „744 patent

          Claim Construction
 Miscellaneous – Correcting Patent in
             District Court
Hoffer v Microsoft Corp.,                     406 F.3d 1365 (Fed.
  Cir. 2005)(per curiam)(JJ. Newman, Bryson and Dyk) – p. 302
 A Court May Correct Harmless Error in a Patent
  That is Not Subject to Reasonable Debate
  – Claims renumbered by ex‟r
  – Dependent claim erroneously referred to original
    indep claim #
  – D. Ct. – Claims invalid under §112(2) as indefinite –
    powerless to correct
  – Fed Cir. REV‟D - harmless error not reasonably
    subject to debate can be corrected by D. Ct.
             Claim Construction
    Miscellaneous – Correcting Patent in
                District Court

ArthroCare Corp. v. Smith & Nephew, Inc., 406
    F.3d 1365 (Fed. Cir. 2005)(J. Bryson – JJ. Mayer and Lourie) – p. 302
   The Correction of a Ministerial Error in the Claims, Which Also
    Serves to Broaden the Claims, is Allowable if it is “clearly evident
    from the specifications, drawings, and prosecution history how
    the error should appropriately b corrected” to One of Skill in the
            Electro surgery – current passes through electrodes
            Before exam “active electrode” changed to “electrode terminal”
             in three out of four places
            Filed Cert of Corr to change four instance
            S&N - enlarged scope of clam by calling for 3 electrodes rather
             than 2
            Fed. Cir. disagreed – nothing in claims calls for 3 electrodes –
             plus that would not make sense
            Correction unambiguous in light of prosecution history
           Claim Construction
  Miscellaneous – Correcting Patent in
              District Court
Group One, Ltd. v. Hallmark Cards, Inc. (Group One II),
  407 F.3d 1365 (Fed. Cir. 2005)(per curiam)(JJ. Newman, Bryson and Dyk)
  – p. 302
 A District Court May Not Correct an Error In a Patent
  Claim Even Though it is Evident From the Prosecution
   – PTO printing error left off end of a claim
       “stripping means (36) for separating the ribbon from said
        mechanical drive wheel means in order to prevent said
        ribbon from adversely affecting operation of said mechanical
        drive wheel means by adhering to said mechanical drive
        wheel means.”
       D. Ct. – invalid under §112(2) as indefinite – powerless to fix
       Fed. Cir. – AFF‟D
           – Error could have been corrected by cert of corr – but
             was not
           – Error not evident from face of the patent          126
                     Claim Construction

PC Connector Solutions v. SmartDisk
 Corp., 406 F.3d 1359 (Fed. Cir. 2005)(J. Lourie – CJ. Michel and J.
   Prost) – p. 307
 Terms Such as “Conventional” Limit Claims to What
  Was “Conventional” as of the Filing Date
    – Connecting peripherals to computer thru coupler inserted into
      diskette drive
    – Claims – “conventional computer input/output port” –
      “peripheral is traditionally connectable *** by means of an
      input/output port ***”
    – Accused products – flash memories in adaptors for diskette
    – D. Ct. - what was “conventional” in 1988 – flash memories not
      connected via convention I/O ports - Not Infringed
    – AFF‟D - “Conventional,” etc., are implicitly time-dependant127
Construction of Means- and Step-
   Plus-Function Limitations

   Highlights
        Generally, but not always, construed
        May be used to avoid dedication issue

        If “means” is not used, there is a “strong”
         presumption against construction as a mpf

             Is It a MPF Limitation?

Linear Tech. v. Impala,        379 F.3d 1311 (Fed. Cir. 2004)(J. Linn –
  JJ. Newman and Schall) – p. 314
 When “Circuit” Is Used With a Description of the Circuit's
  Operation, There Is Sufficient Structural Meaning and § 112(6)
  Presumptively Will Not Apply
   – Apparatus & method for controlling switching voltage regulator
   – “first circuit for * * *” “second circuit * * *” “third circuit for * * *”
   – D Ct – construed under § 112(6)
   – Fed Cir – error – none use “means”
   – “[t]echnical dictionaries, which are evidence of the understandings of
     persons of skill in the technical arts, plainly indicate that the term
     „circuit‟ connotes structure.”
   – “when the structure-connoting term „circuit‟ is coupled with a
     description of the circuit‟s operation, sufficient structural meaning
     generally will be conveyed to persons of ordinary skill in the art, and
     § 112 ¶ 6 presumptively will not apply.”
             Is It a MPF Limitation?

Cardiac Pacemakers v. St. Jude,                  381 F.3d 13(Fed. Cir.
  2004)(J. Newman - SCJ Friedman and J. Rader) – p. 315
 Claiming a Step by Itself, or Even a Series of Steps,
  Does not Implicate § 112(6)
   – Implantable cardiac defibrillators – could detect type of
   – Claim – “A method *** comprising the steps of: (a)
     determining a condition of the heart from among a plurality
     of conditions ***.”
   – D Ct – step-plus-function
   – Fed Cir – error – BUT – must be construed in light of spec
            Is It a MPF Limitation?

Lighting World v. Birchwood,               382 F.3d 1354
  (Fed. Cir. 2004)(J. Bryson – J. Linn and SJ Plager) – p.
 Absence of the Word “Means” Creates a “Strong”
  Presumption Against Construction Under § 112(6):
  Claim Language May Use Generic Phrases Here
  “Connector Assembly” and Yet Avoid § 112(6)
   – Lighting fixtures
   – “connector assembly for * * *”
   – “while it is true that the term „connector assembly‟ does not
     bring to mind a particular structure, that point is not
     dispositive. What is important is whether the term is one that
     is understood to describe structure, as opposed to a term that
     is simply a nonce word or a verbal construct that is not
     recognized as the name of structure and is simply a substitute
     for the term „means for.‟ ”
  Construction of Means- and Step-Plus-
   Function Limitations – Corresponding

Linear Tech. Corp. v. Impala Linear Corp.,                 371 F.3d
  1364 (Fed. Cir. 2004)(J. Linn, JJ. Newman and Schall) – p. 320
 “Corresponding Structure” Does Not Necessarily Have
  to be Restricted to a Single Structure
   – Apparatus & method - controlling switching regulator
   – Claims – “second means *** to vary the duty cycle of the
     switching transistors”
   – Spec – one-shot circuit & “could be replaced by pulse-width
     modulator circuit – PWM circuits known in the art
   – “[t]hat the disputed term is not limited to a single structure
     does not qualify it as a corresponding structure, as long as
     the class of structures is identifiable by a person of ordinary
     skill in the art.”
  Construction of Means- and Step-Plus-
   Function Limitations – Corresponding

Versa Corp. v. Ag-Bag Int’l Ltd., 392 F.3d 1325 (Fed.
  Cir. 2004)(J. Dyk – J. Rader – dissenting J. Newman) – p. 325
 When Multiple Embodiments, Either Illustrated in the
  Drawings or Described in the specification, Correspond
  to the Claimed Function, § 112(6) Requires Reading the
  Limitation to Cover Each Embodiment
   –   Compost bagging machine
   –   “means creating air channels ***”
   –   Spec – perforated pipes & V-shaped flutes
   –   D. Ct. - structure - both perforated pipe and flutes
   –   Not Infringed - Accused device did not use flutes
   –   Fed. Cir. REV‟D – spec - either or both could be used
           J. Newman –not new question – doesn‟t need new answer - every
            embodiment described & illus included both pipe & flutes
  Construction of Means- and Step-Plus-
   Function Limitations – Corresponding
Playtex Prods. Inc. v. Procter & Gamble,                       400
  F.3d 901 (Fed. Cir. 2005)(J. Gajarsa, JJ. Lourie and Linn) – p.
 “Corresponding Structure” Must Take into Account
  What is Shown in the Drawings and What is
  Described in the Specification as Well
   – Tampon applicator
   – “means for limiting the movement of said plunger through
     said rearward portion of said barrel”
   – Playtex – dwg - curved lip req‟d on each end of the plunger
   – D. Ct. disagreed – based on spec – could be on one end only
   – Fed. Cir. – Agreed – spec broader than dwg

  Construction of Means- and Step-Plus-
   Function Limitations – Corresponding
Default Proof Credit Card Sys., Inc. v. Home
 Depot USA, Inc., ___ F.3d ___ (Fed. Cir. 2005)(J.
  Gajarsa, JJ. Lourie and Linn) – p. 331
 Testimony by One of Ordinary Skill in the Art cannot
  Supplant the Total Absence of Structure from the
   – Point-of-sale terminals – prepaid debit cards
   – “means for dispensing at least one debit card.”
   – D. Ct. – INVALID - structure not recited in spec and could
     not be the POS terminal
   – Fed. Cir. – AFFIRMED – “It is not proper to look to the
     knowledge of one skilled in the art apart from and
     unconnected to the disclosure of the patent.”
      Infringement – Product Claims

   Literal Infringement
    – Pure Product Claims May Be Infringed
     Irrespective of the Method of Manufacture
       AFG Indus, Inc. v. Cardinal IG Co.
        (AFG II)., 375 F.3d 1367 (Fed. Cir. 2004) – p.

           Infringement - § 271(a)

   Section 271(a) provides:
    – Except as otherwise provided in this title, whoever
      without authority [1] makes, [2] uses, [3] offers
      to sell, or sells any patented invention, within the
      United States or [4] imports into the United States
      any patented invention during the term of the
      patent therefor, infringes the patent.

           Infringement - § 271(a)

MEMC Electronic Materials, Inc. v.
 Mitsubishi Materials Silicon Corp., __ F.3d
  ____ (Fed. Cir. 2005) – J. Schall, JJ. Newman and Dyk - NEW
 There is No Infringement Under § 271(a) Where
  There is No Sale or Offer for Sale of the Accused
  Products in the United States
   – Samsung (Korea) – spec‟s – silicon wafers
   – Samsung (Japan) – placed order w/ SUMCO
   – SUMCO – mf‟d & shipped to Samsung (Austin)
   – E-mails – SUMCO - Samsung (Austin)
   – Fed Cir – e-mails – no price quotes – not a
     sale/offer for sale
   – “Sale” took place in Japan
            Infringement - § 271(a)

NTP, Inc. v. Research In Motion, Ltd., ___ F.3d ____ (Fed. Cir.
  2005) – J. Linn, C.J. Michel, J. Schall – NEW – w/drew prior 2004
 There May Be Infringement Based on the “Use” Prong of §
  271(a) of “System” Claims Even Though One Component of the
  Accused System is Located in Canada Where the System is Used
  From Within the Unites States, But Method Claims Are Not So
  Infringed Under the “Use” or the Other Prongs of § 271(a)
   – BlackBerry – all e-mails go thru “relay” – Canada – “relay”
      part of claims
   – Claims – (1) system, and (2) method
   – Claimed “system” not on “made” in U.S., but “used” in U.S.
   – “place where control of the system is exercised and
      beneficial use of the system obtained.”
           Infringement - § 271(a)

NTP, Inc. v. Research In Motion, Ltd., ___ F.3d ____
  (Fed. Cir. 2005) – J. Linn, C.J. Michel, J. Schall – NEW – w/drew
  prior 2004 opinion
    Different result re method claims
        “[i]t is well established that a patent for a method or
         process is not infringed unless all steps or stages of the
         claimed process are utilized.”
        “a process cannot be used „within‟ the United States as
         required by section 271(a) unless each of the steps is
         performed within this country.”
        Method also not “sold” or “imported” into the U.S.

    Inducing Infringement - § 271(b)

MEMC Electronic Materials, Inc. v. Mitsubishi
 Materials Silicon Corp., __ F.3d ____ (Fed. Cir. 2005) – J.
   Schall, JJ. Newman and Dyk - NEW
 E-Mail Exchange of Technical Data May Constitute Inducement
  of Infringement
   – Samsung (Korea) – spec‟s – silicon wafers
   – Samsung (Japan) – placed order w/ SUMCO
   – SUMCO – mf‟d & shipped to Samsung (Austin)
   – E-mails – SUMCO - Samsung (Austin)
   – Fed Cir – e-mails – no price quotes – not a sale/offer for sale
   – However – evidence (1) SUMCO provided technical support
      to Samsung Austin in the form of e-mail communications,
      (2) SUMCO sent wafers directly to Samsung Austin to
      address technical problems, and (3) SUMCO personnel made
      on-site visits - Samsung Austin - technical presentations –
      may evidence inducement.
   Infringement - § 271(e)(1) – Safe
 “uses reasonably related to the development and
  submission of information under a Federal law which
  regulates the manufacture, use, or sale of drugs or
  veterinary biological products” Are Not Necessarily
  Limited to Data Developed for Submission to the FDA
   – Integra Lifesciences I, Ltd v. Merck KGaA, 331 F.3d 860
     (Fed. Cir. 2003) – J. Rader, J. Prost, concurring-in-part, dissenting-
     in-part opinion J. Newman - § 271(e)(1) does not extend to activity
     that is not directly related to seeking regulatory approval
   – Merck KGaA v. Integra Lifesciences I, Ltd., ___ U.S. ___
     (2005) - “the use of patented compounds in preclinical studies is
     protected under § 271(e)(1) as long as there is a reasonable basis
     for believing that the experiments will produce „the types of
     information that are relevant to an IND or NDA.‟ ”
   – Fed Cir – has called for further briefing
              Infringement - § 271(f)

   Section 271(f) provides:
    – (1) Whoever without authority supplies or causes to be supplied
      in or from the United States all or a substantial portion of the
      components of a patented invention, where such components
      are uncombined in whole or in part, in such manner as to
      actively induce the combination of such components outside of
      the United States in a manner that would infringe the patent if
      such combination occurred within the United States, shall be
      liable as an infringer.
    – (2) Whoever without authority supplies or causes to be supplied
      in or from the United States any component of a patented
      invention that is especially made or especially adapted for use in
      the invention and not a staple article or commodity of commerce
      suitable for substantial noninfringing use, where such component
      is uncombined in whole or in part, knowing that such component
      is so made or adapted and intending that such component will
      be combined outside of the United States in a manner that
      would infringe the patent if such combination occurred within
      the United States, shall be liable as an infringer.
                  Infringement - § 271(f)

   Pellegrini v. Analog Devices, 375 F.3d 1133 (Fed. Cir.
    2004) J. Lourie, JJ. Rader & Bryson– p. 339
     – As a Matter of First Impression, There is No Infringement Under
       § 271(f) When a US Company has Allegedly Infringing Devices
       Made in Foreign Facilities and Sells Those Devices in Countries
       Other Than the United States
         Analog (1) U.S. corp responsible for ADMC products; (2)
          conceived & designed products; (3) exclusive mf‟r; and (4)
          made all R&D decisions for products, BUT products “made”
          outside of U.S.
         Fed Cir - § 271(f) “applies only where components of a
          patent[ed] invention are physically present in the United
          States and then either sold or exported *** ”
         “[t]he plain language of § 271(f)(1) focuses on the location
          of the accused components, not the accused infringer.”
         “supplies or causes to be supplied” “clearly refers to physical
          supply of components, not simply to the supply of
          instructions or corporate oversight.”                   144
            Infringement - § 271(f)

Exporting Computer Code to Foreign Computer
  Manufacturers for Replication on Hard Drives
  Falls Within the Scope of § 271(f)
       Eolas Techs., Inc. v. Microsoft Corp.,
       399 F.3d 1325 (Fed. Cir. 2004) – p. 341
        – Internet Explorer – accused infringing product
        – MS exported “golden master disks” – loaded on hard
        – MS - § 271(f) did not apply b/c disks never became part
          of infringing product
        – Fed Cir – rejected - § 271(f) – “components of a patented
          invention” not limited to “machines or „physical
          structures,‟ but extends to every component of every
          form of the invention.”                                145
               Infringement - § 271(f)
Exporting a Master Disk Containing Windows®
  Operating System and Speech Codecs Alleged to
  Infringe Constitutes “Suppl[ing]” “Components of a
  Patented Invention” Under §271(f)
   – AT&T Corp. v. Microsfot Corp., ___ F.3d ___ (Fed.
     Cir. 2005) J. Lourie, J. Mayer, dissent – J. Rader – p. 342
         MS – (1) s/w not a “component” – decided in Eolas; (2)
          copies of Windows “made” from master disks outside of
         Panel – “supplying” software generally involved making
          a copy
         “Accordingly, for software „components,‟ the act of
          copying is subsumed in the act of „supplying,‟ such that
          sending a single coy abroad with the intent that it be
          replicated invokes § 271(f) liability for those foreign-
          made copies.
         J. Rader – “copies” were “made” by foreign mf‟rs.
            Infringement - § 271(f)

Merely Supplying Products to Customers in the United
  States Does Not Constitute Supplying or Causing to be
  Supplied Any Steps of a Patented Process for
  Combination Outside the United States and Therefore
  Cannot Infringe Method Claims Under § 271(f) – Under
  The Facts of This Case
   – NTP, Inc. v. Research In Motion, Ltd., ___ F.3d
     ____ (Fed. Cir. 2005) – J. Linn, C.J. Michel, J. Schall – NEW –
     w/drew prior 2004 opinion
       RIM‟s supply of the BlackBerry handheld devices and
        Redirector products to its customers in the United States is
        not the statutory „supply‟ of any „component‟ steps for
        combination into NTP‟s patented methods.                 147
    Infringement – Expert Testimony

In Cases Involving Complex Technology, Where the
   Accused Infringer Offers Expert Testimony Negating
   Infringement, the Patentee Cannot Satisfy Its Burden
   of Proof by Relying Only on Testimony From Those
   Who Are Admittedly Not Expert in the Field
   – Centricut, LLC v. Esab Group, Inc., 390 F.3d
     1361 (Fed. Cir. 2004) – J. Dyk, JJ. Michel & Clevenger – p.
         Centricut (DJ plaintiff) – expert testimony
         Esab – no expert testimony
         “We do not state a per se rule that expert testimony is required
          to prove infringement when the art is complex. Suffice it to say
          that in a case involving complex techology, where the accused
          infringer offers expert testimony negating infringement, the
          patentee cannot satisfy its burden of proof by relying only on
          testimony from those who are admittedly not expert in the field.”
             Doctrine of Equivalents
              “All Elements” Rule
    When the Substitution of One Feature for Another Into an
    Element of an Accused Product Places it Outside the Scope
    of the Recited Claim Element, the Doctrine of Equivalents
    May Not Be Applied
   Novartis Pharms. v. Abbott Labs., 375 F.3d
    1328 (Fed. Cir. 2004) – p. 369

    The Doctrine of Equivalents Does Not apply if Applying the
    doctrine Would Vitiate an Enter Claim Limitation
   Seachange Int’l, Inc. v. C-COR, Inc., ___
    F.3d ___ (Fed. Cir. 2005) – p. 371

             Doctrine of Equivalents
              “All Elements” Rule

    Where a Theory of Equivalents Would “Entirely Vitiate” a
    Particular Claim Element, Summary Judgment May Be
    Entered by the Court
   Searfoss v. Pioneer Consolidated, 374 F.3d
    1142 (Fed. Cir. 2004) – p. 373

    There is No Equivalent to “mounted on” – The Issue is
   Asyst Techs., Inc. v. Emtrak, Inc., 402
    F.3d 1188 (Fed. Cir. 2005) – p. 375

         Doctrine of Equivalents
          “All Elements” Rule

No Set Formula Determines Whether a Finding of
Equivalence Would Vitiate a Claim Limitation – Judged
by the Totality of the Circumstances: But, That Result is
More Likely in Cases Involving Mechanical Inventions
Where the Equivalent Was Known
 – Freedman Seating Co. v. American Seating
   Co., ___ F.3d ____ (Fed. Cir. 2005) – J. Schall, J. Mayer & S.C.J.
   Pager – NEW
       Folding public transportation seats

       Doctrine of Equivalents
        “All Elements” Rule

Freedman Seating Co. v. American
  Seating Co. - Cont‟d

                 Doctrine of Equivalents
                  “All Elements” Rule
Freedman Seating Co. v. American Seating Co., -
   – Claims – “a cantilevered seatbase having *** a moveable end
     slidably mounted to said seatbase *** ”
   – Generic – “four bar mechanism”
              Patent – “slider crank”
              Accused – “fourth link”
   – Compared Ethicon Endo-Surgery - finding of infringement
     under DOE would not vitiate limitation - “a subtle difference in
     degree, not a clear, substantial difference or difference in
     kind,” with Sage Prods., Inc. v. Devon Indus., Inc. -
     finding of equivalence would vitiate limitation - based “on
     several conclusions, including the simplicity of the structure,
     the specificity and narrowness of the claim, and the
     foreseeability of variations at the time of filing the claim with
     the PTO.”
   – Here – simple and forseeable                                 153
Doctrine of Equivalents – Dedication
    (1) Dedication is Reviewed as an Issue of Law; (2) Intent is
    Not a Part of the Disclosure-Dedication Analysis; (3) The
    Disclosure-Dedication Rule Does not Impose a § 112
    Requirement on the Disclosed but Unclaimed Subject
   Toro Co. v. White Consolidated (Toro
    III), 383 F.3d 1326 (Fed. Cir. 2004)(J. Linn – JJ. Rader and Dyk)
    – p. 379
     – Leaf blower
     – White – two-piece cover/ring disclosed not claimed
     – Toro – (1) unintentional; (2) didn‟t have § 112(1)
     – Fed Cir. – doesn‟t matter

       Prosecution History Estoppel

   Warner-Jenkinson Presumption – p. 382
    – If no explanation is given for claim
      amendment, the court should presume that
      the PTO had a substantial reason related to
      patentability for requiring amendment and
      therefore estoppel should apply.

       Prosecution History Estoppel

   Festo VIII – S Ct – p. 383
    – Estoppel arises from amendments that narrow
      claim scope to satisfy any requirement of the
      patent statute
    – Narrowing amendment creates a rebuttable
      presumption of estoppel
    – Rebuttal if -
           [1] equivalent was unforseeable
           [2] amendment has only tangential relationship to
           [3] some other reason why patentee could not have been
            reasonably expected to cover equivalent literally   156
Festo IX
                    Question # 1:
              Was an amendment filed                No
                                                                                           1. When the prosecution
              that narrowed the literal                         No estoppel                history record reveals no
                 scope of a claim?                                                         reason for the narrowing
                                                                                           amendment, Warner-
                                                                                           Jenkinson presumes that
                                                                                           the patentee had a
                                                                                           substantial reason relating
                 Yes                                                                       to patentability;
                                                                                           consequently, the patentee
                                                                                           must show that the reason
                                                                                           for the amendment was not
                    Question # 2:              No                                          one relating to patentability
               Was the reason for that                                                     if it is to rebut that
            amendment a substantial one                                                    presumption.
              relating to patentability?                                                   2. A patentee’s rebuttal of
                                                                                           the Warner-Jenkinson
                                                                                           presumption is restricted to
                                                                                           the evidence in the
                Yes                                 No estoppel                            prosecution history record.

                   Question # 3:
                                                                                      1. Festo VIII imposes the
               Scope of the subject
                                                                                      presumption that the patentee has
             matter surrendered by the
                                                                                      surrendered all territory between
              narrowing amendment.
                                                                                      the original claim limitation and the
             Has Festo VIII presumption
                                                                                      amended claim limitation.
                  been rebutted?
                                                     No                               2. The patentee may rebut that
                                                                                      presumption of total surrender by
                                                                                      demonstrating that it did not
                Yes                                                                   surrender the particular equivalent
                                                                                      in question.

                    Question # 4:
                                                         PHE bars patentee from
            On the merits, is the accused
                                                         relying on DOE for accused
           element in fact equivalent to the
                 limitation at issue?
    Prosecution History Estoppel –
                         Post Festo IX

        The Presumption Does Not Apply When a
        Claim is Broadened
       Business Objects, S.A. v. MicroStrategy,
        393 F.3d 1366 (Fed. Cir. 2005)(J. Rader – JJ. Schall and Prost) – p.
    –      Method - searching relational databases
    –      Claim-at-issue added during prosecution – as construed by Fed
           Cir – broader than original claims
    –      Festo presumption does not apply

        Prosecution History Estoppel –
                         Post Festo IX
   Tangential Relationship
    –    Insituform Techs., Inc. v. CAT
         Contracting, Inc., 385 F.3d 1360 (Fed. Cir. 2004)(J.
         Schall – CJ. Mayer and J. Michel) – p. 395
           Long history – had previously held that PHE did not bar
            inf under DOE
           Claims amd‟d during prosecution to avoid p/a – ltd claims
            to one suction cup – accused process used multiple cups
           HELD – amd to avoid p/a was “tangential” to use of
            multiple cups – overcame Festo presumption


     False Marking
    –    False Marking Requires Proof That a Product Does Not Fall
         Within the Scope of at Least One Properly Construed Claim in
         Each Patent Marked on the Product, and an Intent to
           Clontech Labs., Inc. v. Invitrogen Corp., 406
            F.3d 1347 (Fed. Cir. 2005)(J. Clevenger – JJ. Dyk and
            Prost) – pg. 400
            –   Honest though mistaken mismarking of an article will not
                trigger liability under the statute
            –   Statute is not a strict liability for mismarking
            –   Intent to deceive required
                   Relief – Injunctions

    Concern Over Business Method Patents and Contentious
     Litigation are Insufficient Reasons to Refuse to Enter a
     Permanent Injunction
    –   MercExchange, L.L.C. v. eBay, Inc.,                    401 F.3d 1323
         (Fed. Cir. 2005)(J. Bryson – CJ. Michel and J. Clevenger) – p. 405
           D. Ct.‟s grounds for refusal to grant injunction insufficient to
            depart from general rule that permanent injunction should issue
            following finding of infringement
    District Court May Refuse to Issue Permanent Injunction Despite
     Finding of Infringement Where the Proofs Required for
     Determining Infringing Activity are not Amenable to a Narrowly
     Tailored Order
    –   Fuji Photo Film Co. v. Jazz Photo Corp.,                   394 F.3d
         1368 (Fed. Cir. 2005)(J. Rader –JJ. Clevenger and Linn) – p. 406
           D. Ct‟s reasoning sufficient to depart from general rule for grant
            of permanent injunctions
           Relief – Actual Damages

    Lost Profits Damages Can Not be Claimed for
     Related Company
    – Poly-America, L.P. v. GSE Lining Tech.,
       383 F.3d 1303 (Fed. Cir. 2004)(J. Lourie – JJ. Michel and
       Rader) – p. 410
         Poly-American could not recover lost profits by related
          company Poly-Flex
         Despite sharing interests in collaborating in the
          manufacture & sale of landfill liners, “that relationship by
          itself is not sufficient to permit Poly-America to claim
          Poly-Flex‟s lost profits from Poly-Flex‟s lost sales.”

Relief – Enhanced Damages – Willful
       Inference From Failure to Introduce Opinion of Counsel
    –      Knorr-Bremse v. Dana Corp.,                   383 F.3d 1337 (Fed. Cir.
           2004)(en banc)(J. Newman – concurring-in-part, dissenting-in-part
           opinion by J. Dyk) – p. 404
    –      Four En Banc Questions – Answered NO!
              1. When the attorney-client privilege and/or work product
               privilege is invoked by a defendant in an infringement suit, is it
               appropriate for the trier of fact to draw an adverse inference
               with respect to willful infringement?
              2. When the defendant has not obtained legal advice, is it
               appropriate to draw an adverse inference with respect to willful
              3. If the court concludes that the law should be changed, and
               the adverse inference withdrawn as applied to this case, what
               are the consequences for this case?
              4. Should the existence of a substantial defense to
               infringement be sufficient to defeat liability for willful
               infringement even if no legal advice has been secured?
Relief – Enhanced Damages – Willful

          Knorr-Bremse v. Dana Corp.,                    - cont‟d
       –     First 2 – (1) perceived widespread disregard for
             patent rts no longer exists, (2) special rule for patent
             cases not req‟d
       –     Third – case specific - remanded
       –     Fourth – part of the willfulness analysis

 Relief – Enhanced Damages – Willful
Affirmative Duty of Care Triggered by Actual Notice of Patent Rts
       Imonex Services, Inc. v. W.H. Munzprufer Dietmar
        Trenner GmbH, 408 F.3d 1374 Fed. Cir. 2005)(J. Rader – SJ.
      Archer and J. Bryson) – p. 429
    –    Affirmative duty of care – after actual notice – remains
    –      Note – marking alone does not trigger duty of care
    –      Ds – no opinion until after suit was filed
    –      Coin selectors
    –      Imonex – OEM D‟s – actual notice (1) display of products w/ patent
           #s at trade shows, (2) distribution of ads with patent notices, (3)
           correspondence w/ D‟s employees
    –      D‟s – only low-level employees w/o decision-making authority
    –      Fed Cir – jury could have found actual notice
    –      Caution – D Ct did not use willful finding to enhance damages
           throughout term of inf – only awarded atty fees for cont‟d sales after
           first trial finding patent valid, enforceable and infringed.    165

       Government’s Right to Federally Funded Inventions
    –     (1) Failure to Follow Requirements of Regulations Governing
          Reporting of Federally Funded Inventions Allows Government to
          Receive Title; (2) Government May Insist on Title Without Showing
          Harm to the Government
             Campbell Plastics Eng’g & Mfg. v. Brownlee, 389 F.3d
              1243 (Fed. Cir. 2004)(J. Clevenger – JJ. Michel and Dyk) – p.
       19 USC § 1337 – International Trade Commission
    –     Enforcement Proceedings are Governed by § 1337(b) – Participants
          in Such Proceedings are Entitled to Raise “all defenses” (i.e.,
             VastFrame Camera, Ltd. v. ITC, 386 F.3d 1108 (Fed. Cir.
              2004)(J. Linn – JJ. Clevenger and Bryson) – p. 506         166

     Antitrust
    –   (1) Antitrust Consequences of Patent Tying is Governed by
        Federal Circuit Law; (2) A Rebuttable Presumption of Market
        Power Arises From Possession of a Patent Over a Tying
          Independent Ink, Inc. v. Illinois Tool Works,
           Inc., 396 F.3d 1342 (Fed. Cir. 2005)(J. Dyk – JJ. Clevenger
           and Prost) – p. 507


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