RECENT DECISIONS IN PATENT LAW

by

Don W. Martens[1]

and

William R. Zimmerman[2]

Knobbe, Martens, Olson & Bear, LLP

550 West C Street, Suite 1200

San Diego, California 92101-3505

For

San Diego Intellectual Property Law Association

October 24, 2002

CLAIM INTERPRETATION — ORDINARY MEANING

1. Teleflex, Inc. v. Ficosa N. Am Corp., 299 F.3d 1313, 63 U.S.P.Q.2d 1374 (Fed. Cir. 2002).

“Claim terms take on their ordinary meaning unless the patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term by redefining the term or by characterizing the invention in the intrinsic record using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Absent a “clear statement of scope” limiting claim terms to the embodiment disclosed in the specification, the fact that only one embodiment is disclosed “is not determinative of the meaning of disputed claim terms,” and the court is “constrained to follow the language of the claims rather than that of the written description.”

Here, the claims were directed to a shift cable for motor vehicles. The parties disputed whether the claim term “clip” was limited to the embodiment disclosed in the specification, which limited “clip” to a structure having “a single pair of legs.” In construing “clip,” the district court erred in restricting the structure to a “single pair of legs” because neither the claim language, specification, or prosecution history mandated the restriction. The claim language did not contain the terms “single” or “pair of legs,” the ordinary meaning of “clip” was not limited to having one pair of legs, and there was no “expression of manifest exclusion or restriction [in the specification or prosecution history] demonstrating an intent to limit” the meaning of “clip”.

The Court distinguished Toro Co v. White Consolidated Industries, Inc. 199 F.3d 1295 (Fed. Cir. 1999), Wang Laboratories, Inc. v. America Online, Inc. 197 F.3d 1377 (Fed. Cir. 1999), and Bell Atlantic Network Services, Inc. v. Covad Communications Group, Inc. 262 F. 3d 1258 (Fed. Cir. 2001), on their facts, finding that in each there was clear basis in the specification or prosecution history for limiting the claim scope.

2. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 62 U.S.P.Q.2d 1658 (Fed. Cir. 2002).

Claim construction involves “a ‘heavy presumption’ that a claim term carries its ordinary and customary meaning.” An accused infringer can overcome this “‘heavy presumption,’ and narrow a claim term’s ordinary meaning, but he cannot do so simply by pointing to the preferred embodiment or other structures or steps disclosed in the specification or prosecution history.” Citing Johnson Worldwide v. Zebco, 175 F.3d 985, 989-90, 992 (Fed. Cir. 1999).

Here, the district court erred in construing the claim term “reciprocating member” directed to a stationary exercise machine to mean only “the single-component straight bar depicted in the patents’ drawings.” The established meaning of “member” was not so restricted, and “nothing in the intrinsic evidence narrow[ed] that claim term’s ordinary meaning,” so that “member” encompassed the multiple-component structure of the accused device. “[T]he specifications did not clearly assign a unique definition to ‘member,’ distinguish ‘member’ based on the prior art, disclaim subject matter or describe a single-component, straight-bar ‘member’ as important to the invention.” The Court did not need to consider expert testimony because the ordinary meaning of “member” could be established from dictionary definitions and intrinsic evidence.

3. Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 60 U.S.P.Q.2d 1851 (Fed. Cir. 2001).

“[U]nless compelled to do otherwise, a court will give a claim term the full range of its ordinary meaning.” After determining the plain meaning of a disputed claim term, a court must undertake the “confirmatory step” of examining the written description and the prosecution history “to confirm that the patentee’s use of the disputed terms is consistent with the meaning given to it by the court.”

Here, the claims related to self-clearing conveyors used in the bottling and packaging industry. The parties disputed whether the claim term “portion” encompassed only unitary or two-piece structures. Because the dictionary definition of “portion” encompassed both types of structures, the broad ordinary meaning of the claim term covered both structures. Although the specification described unitary structures as a preferred embodiment, the Federal Circuit found that other statements in the specification supported the broad construction of the term “portion.” Citing SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 227 U.S.P.Q.2d 577 (Fed. Cir. 1985) (en banc), the Court noted that “an applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention,” for such a rule would eliminate the need for patent claims. Because the district court erred in limiting the meaning of the claims, the Court reversed summary judgment of noninfringement.

4. Texas Digital Sys., Inc. v. Telegenix, Inc., __ F.3d __, 2002 WL 31307212, (Fed. Cir. Oct. 16, 2002).

“[D]ictionaries, encyclopedias and treatises are particularly useful resources to assist the court in determining the ordinary meaning of claim terms” because they are “publicly available at the time the patent is issued [and are] objective resources that serve as reliable sources of information on the established meanings that would have been attributed to the terms of the claims by those of skill in the art” and are “not colored by the motives of the parties, and not inspired by litigation.” Judges are free to consult dictionaries and similar materials regardless of whether or not they have been introduced into evidence. The intrinsic record, such as the specification and prosecution history must always be consulted to identify which of the many dictionary definitions is most appropriate.

The presumption in favor of the ordinary meaning (as revealed by its dictionary definition) is overcome only where the patentee has set forth an express definition of the term or has clearly disavowed claim scope either in the specification or in the prosecution history. Consulting the written description and prosecution history before any effort is made to discern the ordinary meaning “invites a violation of our precedent against importing limitations into the claims.” Where only one embodiment of the invention is disclosed, “the risk of starting with the intrinsic record is that the single form or embodiment so disclosed will be read to require that the claim terms be limited to that single … embodiment.”

“Where the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight.” Any other rule would be unfair to competitors who must be able to rely on the publicly-available patent documents.

OTHER CLAIM CONSTRUCTION ISSUES

5. Honeywell Inc. v. Victor Co. of Japan, 298 F.3d 1317, 63 U.S.P.Q.2d 1904 (Fed. Cir. 2002).

An inventor’s definition of a claim term “is relevant in indicating the meaning that the inventor ascribed to the term [even if the] definition does not have a narrowing effect.” Here, the claims were directed to components of an auto focus camera. “[T]he district court erred in not according more weight to the inventor’s definition” of “contiguous” in the prosecution history as “in actual contact or near, though not in contact,” and instead construing “contiguous” to mean “‘next in succession’ without any intervening structure.” The inventor’s definition was relevant to determining the meaning of “contiguous” even though it did not have a narrowing effect. Moreover, though the inventor’s definition was taken from a standard English dictionary, the fact that the definition “was not the most common meaning of the term was not disqualifying because the inventor had expressed an intent to invoke the broadest meaning of ‘contiguous’, not just the most common meaning.”

The description of an embodiment in the written description does not dictate claim construction that results in disclaimed subject matter when claim language “makes reasonably clear that the inventor did not intend to limit the scope of the claim to” that embodiment. The Federal Circuit declined to find that the written description required a construction of “contiguous” that limited the scope of the disputed claim only “to structures that would solve both of the prior art problems identified in the background section.” Language in the specification requiring limitation was not explicit, and more importantly, the disputed claim included language “relating to only one of the two cited prior art problems,” suggesting that the inventor did not intend to limit the invention to one embodiment.

Representations made during prosecution by the inventor that “a particular embodiment satisfies the definition” of a disputed claim term do not limit the term to “the order of elements found in that embodiment.” The Court held that representations made by the inventor during prosecution that a particular embodiment satisfied the definition of “contiguous” did not mean that “‘contiguous’ [was] limited to the order of elements in that embodiment.” Instead, the inventor merely explained that “his assembly satisfied the requirements of contiguity.”

6. Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 62 U.S.P.Q.2d 1781 (Fed. Cir. 2002).

A claim preamble limits claim scope if it “recites essential structure or steps, additional structure or steps underscored as important by the specification, is used for antecedent basis, is essential to understand limitations or terms in the claim body, or is clearly relied upon during prosecution to distinguish the claimed invention from the prior art.” However, the preamble does not limit claim scope where it is not relied upon to distinguish prior art and “the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.”

Here, the dispute involved two claims. The first claim included the disputed phrase in the preamble but not in the claim body, whereas the second claim included the disputed phrase both in the preamble and the claim body. As to the first claim, the Federal Circuit held that neither the claims, specification, or prosecution history demonstrated that the preamble phrase limited claim scope, noting that “[t]he applicant did not rely on this phrase to define its invention” or to distinguish prior art. Additionally, the disputed phrase was not “essential to understand limitations or terms in the claim body,” so that deletion of the phrase from the preamble did not “affect the structural definition or operation of the claimed invention. Based on an overall evaluation of the specification, the phrase did not recite additional structure for the claimed invention. As to the second claim, the Court held that the preamble phrase limited claim scope “by virtue of its inclusion in the body” of the claim.

CLAIM INTERPRETATION — § 112, ¶ 6 CLAIMS

7. Generation II Orthotics, Inc. v. Med. Tech. Inc., 263 F.3d 1356, 59 U.S.P.Q.2d 1919 (Fed. Cir. 2001).

Section 112, ¶ 6 “does not permit limitation of a means-plus-function claim by adopting a function different from that explicitly recited in the claim.” In construing the claim limitation “joint means in the [knee] brace for allowing controlled medial and lateral inclination of each rigid arm,” the district court erred in restricting the function to require “control” throughout the range of motion because the claim contains no such restriction. The Federal Circuit also declined to restrict “control” in view of the prior art. Rather, “controlled” is given its ordinary and accustomed meaning.

“The mere fact that a method claim is drafted with language parallel to an apparatus claim with means-plus-function language does not mean that the method claim should be subject to analysis under § 112, paragraph 6.” The district court erred in so limiting method claims that did not contain the word “means.”

8. Asyst Techs., Inc. v. Empak, Inc., 268 F.3d 1364, 60 U.S.P.Q.2d 1567 (Fed. Cir. 2001).

Section 112, ¶ 6 only permits incorporation of structure from the written description necessary to perform the claimed function. “Structural features that do not actually perform the recited function do not constitute corresponding structure and thus do not serve as claim limitations.” Here, the structure in dispute enabled the claimed “second microcomputer means” to perform the claimed functions, but did not actually perform those functions. Thus, the disputed structure was not properly part of the “second microcomputer means.” “The corresponding structure to a function set forth in a means-plus-function limitation must actually perform the recited function, not merely enable the pertinent structure to operate as intended,” because it is not necessary to claim every element required to enable the invention to be used. Summary judgment of noninfringement was reversed.

§ 112, ¶ 6 STEP-PLUS-FUNCTION CLAIMS

9. Masco Corp. v. United States, No. 01-5107, 2002 WL 1974133 (Fed. Cir. Aug. 28, 2002).

Where a method claim uses the term “steps of” rather than “step(s) for,” there is no presumption that § 112, & 6 is invoked, and that section will not be invoked “without a showing that the limitation contains nothing that can be construed as an act.”

Here, the Court of Federal Claims erred in holding that the phrase “transmitting a force” in a claim employing the term “steps of” was a step-plus-function limitation. The function “is to drive the lever into the cam.” “‘[T]ransmitting’ in the sense of causing a force to be conveyed through a medium by mechanical parts” was an act, “since it describes how the function . . . is accomplished.”

The Court discussed with favor the extensive analysis of step-plus-function claims in Judge Rader’s concurrence in Seal-Flex, Inc. v. Athletic Track and Court Construction, 172 F.3d 836 (Fed. Cir. 1999).

10. Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 61 U.S.P.Q.2d 1470 (Fed. Cir. 2002).

“For a method claim, § 112, & 6 is implicated only when steps plus function without acts are present. Merely claiming a step by itself, or a series of steps, without recital of a function does not trigger the application of § 112, & 6. Furthermore, method claims that ‘parallel,’ or have limitations similar to, apparatus claims admittedly subject to § 112, & 6 are not necessarily subject to the requirements of § 112, & 6” and must be independently evaluated.

Here, the dispute involved a method and an apparatus claim for providing gas assistance to injection molding process. The method claim had similar limitations to the apparatus claim, which was admittedly in means-plus-function form. The district court erred in “finding that the limitations of [the method claim] must be interpreted according to § 112, & 6 consistently with [the apparatus claim], without independently evaluating application of § 112, & 6 to [the method claim].” The Federal Circuit held that the method claim was not in step-plus-function format because the claim “had no words indicating ‘step-plus-function’ form, such as ‘step for,’” and “recited a series of steps without the recital of function.” Instead, the method claim was a “garden variety process claim.”

DEFINITENESS AND WRITTEN DESCRIPTION

11. Creo Prods., Inc. v. Presstek, Inc., Nos. 01-1634, 02-1023, 2002 WL 31056980 (Fed. Cir. Sept. 17, 2002).

“Under our case law interpreting § 112, ¶ 2, knowledge of one skilled in the art can be called upon to flesh out a particular structural reference in the specification for the purpose of satisfying the statutory requirement for definiteness.”

“Thus, in addressing the question whether a means-plus function limitation satisfies the definiteness requirement, we focus our inquiry on whether one skilled in the art would have understood that the specification of each patent disclosed structure capable of performing the function recited in the claim limitation.”

Pointing to the characterization of the disputed structures as “conventional” and “standard” in patent applications filed prior to the filing of the disputed patents, the Federal Circuit held that the “means of mounting” and “means for rotating” limitations did not make the patents invalid for indefiniteness. The patents in dispute concerned an electronic method of modifying images destined to be created on printing plates, in order to correct for uniform and non-uniform printing errors.

The court also highlighted how expert testimony was consistent with other indicia of the knowledge of those having ordinary skill in the art.

12. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 63 U.S.P.Q.2d 1769 (Fed. Cir. 2002).

Where it would be apparent to one of skill in the art, based on the specification, that the invention set forth in a claim is not what the patentee regarded as his invention, we must hold that claim invalid under § 112, paragraph 2.

Specifically, the Court pointed out that while claims 1-4 and 13 limit one of the two pivot steering boxes to pivoting ‘its gear box only in a plane perpendicular to said biaxial plane,’ the specification describes this structure in contrary terms: “rotation about the axis established by bolt 272 is not permitted; gearbox 85A cannot pivot in a plane perpendicular to the biaxial plane.”

In response to the patentee’s argument that one of skill in the art would understand that the term “perpendicular” in the claim to mean “parallel,” the Court explains that “it is not our function to rewrite claims to preserve their validity”.

The Court further states that “it is of no moment that the contradiction is obvious: semantic indefiniteness of claims ‘is not rendered unobjectionable merely because it could have been corrected’ In re Hammack, 57 C.C.P.A. 1251, 427 F.2d 1384, 1388 n.5, 166 USPQ 209, 215 n.5 (CCPA 1970).”

13. Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 63 U.S.P.Q.2d 1725 (Fed. Cir. 2002).

The patent at issue pertains to an implantable defibrillator, which is a device used to stimulate an ailing heart. The claim language in dispute is the “third monitoring means for monitoring the EKG signal . . . for activating said charging means . . . .” limitation for which the district court found no corresponding structure. In one embodiment, a physician uses the external console to control the implanted device. In the second embodiment, the patient alone operates the defibrillator.

“Construction of a means-plus-function limitation involves two steps. First, the court must identify the claimed function. Here, the literal language of the claim and the prosecution history make clear that a single means, i.e. the “third monitoring means” performs two functions, monitoring and activating. The claim does not merely recite “a means for doing x and y” which could be “ambiguous about whether the limitation required one means for performing both functions . . . , or simply one means for performing x and one (potentially different) means for performing function y.” The recitation of “monitoring means” followed by the two functions, requires that the means which monitors also activates.

After identifying the claimed function, the court must then determine what structure, if any, disclosed in the specification corresponds to the claimed function. Here, only the physician could possibly perform both the monitoring and activating functions. The physician is not a means and is not structure corresponding to the claimed means. Thus, the claim is invalid for failure to satisfy the definiteness requirement of 35 U.S.C.S. § 112, ¶ 2.” (Citations omitted).

14. Exxon Research and Eng’g Co. v. United States, 265 F.3d 1371, 60 U.S.P.Q.2d 1272 (Fed. Cir. 2001).

“By finding claims indefinite only if reasonable efforts at claim construction prove futile, we accord respect to the statutory presumption of patent validity.” In determining whether claims are sufficiently definite to comply with 35 U.S.C. § 112, ¶ 2, the claims need not “be plain on their face.” Rather, “the claims must be amenable to construction, however difficult that task may be.” “If a claim is insolubly ambiguous, and no narrowing construction can properly be adopted, we have held the claim indefinite. If the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity.”

Treating indefiniteness as a claim construction issue, the Federal Circuit held that there can be no underlying factual issues which preclude the Court from determining the issue as a question of law.

The claims were directed to improvements in the process for converting natural gas to liquid hydrocarbon products. The Federal Circuit reversed the Court of Federal Claims grant of summary judgment of indefiniteness, finding that one of skill in the art would understand the scope of the difficult claims in light of the specification. The Court also noted that “close questions of indefiniteness in litigation involving issued patents are properly resolved in favor of the patentee.”

WRITTEN DESCRIPTION

15. PIN/NIP, Inc. v. Platte Chem. Co., No. 02-1056, 2002 WL 2010431 (Fed. Cir. Sept. 4, 2002).

The patent at issue is directed to a composition and methods for inhibiting sprout growth on tubers, such as potatoes, by application of two chemicals. Claim 33, added during prosecution, was broad enough to encompass the spaced, sequential application of the two chemicals. The specification disclosed only application of a mixture of the two chemicals.

PIN/NIP argued that claim 33 was invalid for lack of written description, because in defining a spaced, sequential application of the chemicals, claim 33 “extends beyond the invention as described in the originally filed application, viz., a unitary mixture of CIPC and a substituted naphthalene.”

The Court concluded that, “the originally filed application, which is devoid of any mention or even implication that the two chemicals can be applied in a spaced, sequential manner, does not support the later-added claim 33.”

In reaching its conclusion of invalidity, the Court noted that it is not “in any manner improper to amend or insert claims intended to cover a competitor’s product the applicant’s attorney has learned about during the prosecution of a patent application. Any such amendment or insertion must comply with all statutes and regulations, of course, but, if it does, its genesis in the marketplace is simply irrelevant.” Here, however, the Court followed Gentry Gallery v. Berkline holding that “a broad claim is invalid when the entirety of the specification clearly indicates that the invention is of a much narrower scope.”

16. New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 63 U.S.P.Q.2d 1843 (Fed. Cir. 2002).

The patent in suit was filed as a continuation in part application that claimed the priority date of an earlier provisional application. On summary judgment, the district court held that the utility application was not entitled to the priority date of the provisional because the disclosure in the provisional specification failed to adequately describe the invention claimed. Without benefit of the priority date of the provisional, the patentee’s commercial sales constituted a § 102(b) bar.

The Federal Circuit affirmed, explaining that “the disclosure must show he had invented each feature that is included as a claim limitation. The adequacy of the written description (i.e., the disclosure) is measured from the face of the application; the requirement is not satisfied if one of ordinary skill in the art must first make the patented invention before he can ascertain the claimed features of that invention.”

“The disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue. Identity of that which is described, however, is necessary: What is claimed by the patent application must be the same as what is disclosed in the specification.”

In response to New Railhead's repeated assertions that Cox was at all times in possession of the claimed invention, the Court indicated that “Although we have recently noted the particular usefulness of the ‘possession’ inquiry when a patentee claims an earlier filing date under 35 U.S.C. § 119, we have at the same time cautioned that the written description requirement is not subsumed by the 'possession' inquiry.”

17. Enzo Biochem, Inc. v. Gen-Probe Inc., 296 F.3d 1316, 63 U.S.P.Q.2d 1609 on rehearing (Fed. Cir. 2002).

The patentee claimed that the reference in the specification to the deposits of biological materials in a public depository inherently disclosed that the inventors possessed the claimed nucleotide sequences, and that its patent claims per se met the written description requirement under 35 U.S.C.S. § 112, ¶ 1. The Federal Circuit originally held that such a deposit was insufficient to satisfy the written description requirement. On rehearing, the same panel vacated its prior decision and held that a reference in the specification to a deposit in a public depository was sufficient to constitute an adequate description of the deposited material.

In a case of first impression, the Court found:

“In light of the history of biological deposits for patent purposes, the goals of the patent law, and the practical difficulties of describing unique biological materials in a written description, we hold that reference in the specification to a deposit in a public depository, which makes its contents accessible to the public when it is not otherwise available in written form, constitutes an adequate description of the deposited material sufficient to comply with the written description requirement of § 112, ¶ 1.”

The Court continued, “Inventions that cannot reasonably be enabled by a description in written form in the specification, but that otherwise meet the requirements for patent protection, may be described in surrogate form by a deposit that is incorporated by reference into the specification. While deposit in a public depository most often has pertained to satisfaction of the enablement requirement, we have concluded that reference in the specification to a deposit may also satisfy the written description requirement with respect to a claimed material.”

However, the case was remanded for the district court to resolve a genuine issue of material fact as to whether the compositions of the broader genus claims are sufficiently described to meet the requirements of § 112, ¶ 1, on the basis of deposits of three sequences.

BEST MODE

18. Bayer AG v. Schein Pharms., Inc., 301 F.3d 1306, ___ U.S.P.Q.2d ___ (Fed. Cir. 2002).

Bayer’s Cipro patent claimed the benefit of the filing date of an earlier application. The defendants argued that the earlier application did not comply with the best mode requirement because it did not disclose the preferred method of making an unclaimed synthetic intermediate used in making the claimed compound. The intermediate was disclosed, and the parties stipulated that the disclosure was sufficient to enable one of ordinary skill in the art to make the intermediate, albeit not by the inventor’s preferred method.

The Federal Circuit noted that it has only held claims invalid for failure to satisfy best mode on seven occasions, and that each of these cases involved failure to set forth 1) the preferred embodiment or 2) a preference that materially affected making or using the invention.

Here, the claimed invention consists of the final antibiotic product and not the starting materials. The Court held that failure to disclose the preferred way of making an unclaimed intermediate ingredient is not fatal because it “has no material effect on the properties of the claimed ciprofloxacin end product.”

Finally, the court addressed the defendant’s argument that disclosure of the preferred method of making the intermediate was mandated because the intermediate was novel. In a previous case, the Federal Circuit had held that “if the best mode for carrying out a claimed invention involves novel subject matter, then an inventor must disclose a method for obtaining that subject matter even if it is unclaimed.” Eli Lilly & Co. v. Barr Labs., 251 F.3d 955 (Fed. Cir. 2001). The court clarifies this earlier holding, stating that “when a novel compound is necessary to practice the best mode, one of skill in the art must be able to obtain that compound,” but the best mode of making the unclaimed novel compound need not necessarily be disclosed.

Judge Rader wrote separately to note that he disapproves of the “materially affected” test laid out by the majority because of its “unspecified breadth,” and the possibility that it could lead to conflicting results.

LACHES IN PROSECUTION

19. Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found., Ltd. Partnership, 277 F.3d 1361, 61 U.S.P.Q.2d 1515 (Fed. Cir. 2002), petition for cert. filed, 71 USLW 3002 (Jun. 18, 2002, No. 01-1855).

The Lemelson Medical, Educational & Research Foundation is the assignee of over 185 unexpired patents and pending patent applications relating to machine vision and automatic identification technology. These patents and pending applications claim the filing date of two applications filed in 1954 and 1956. In a series of consolidated declaratory judgment actions, the district court dismissed claims related to the defense of “prosecution laches” for failure to state a claim.

On appeal the Federal Circuit reversed, finding that the doctrine of prosecution laches may be applied to bar enforcement of patent claims that issue after an unreasonable and unexplained delay in prosecution even though the applicant complied with the pertinent statutes and rules. The Court traced the origin of the defense of prosecution laches through its origins in Supreme Court precedent, and rejected Lemelson’s contention that the 1952 Patent Act eliminated this defense. The Court also declined to consider two non-precedential Federal Circuit cases on the issue.

Judge Newman dissented, concluding that the 1952 Patent Act did eliminate the defense. Judge Newman also relied on the two non-precedential cases as supporting the position that the Federal Circuit had already rejected prosecution laches as a defense.

20. In re Bogese, No. 01-1354, 2002 WL 31041846 (Fed. Cir. Sept. 13, 2002).

Applicant Bogese engaged in a pattern of receiving a final rejection, not amending the application, and filing a file wrapper continuation application six months later, resulting in a total of twelve continuation applications. After final rejection of the eleventh application, the Examiner warned Bogese, “the next continuation of this series may be rejected by invoking the equitable doctrine of laches, absent any substantive amendment to advance prosecution.” Subsequently, Bogese filed another file wrapper continuation application, which was rejected on the grounds of forfeiture.

The Federal Circuit held that the PTO is authorized to reject a patent application where the applicant fails to advance prosecution for “an unreasonably long period,” noting that it had recently held in Symbol Technologies, Inc. v. Lemelson Medical, 277 F.3d 1361 (Fed. Cir. 2002) that laches may bar enforcement of a patent in the infringement context. The court held that there is “no basis for denying the power to the PTO itself that we have recognized exists in the district courts in infringement actions.” Moreover, the court noted that the PTO’s power is even broader than that of a court in this area, because of its administrative authority to set reasonable deadlines and requirements for the prosecution of applications.

Judge Newman dissented, espousing the view that Symbol Technologies should be limited to the infringement context, and to situations in which continued refiling caused undue delay or prejudice.

ON SALE BAR

21. In re Kollar, 286 F.3d 1326, 62 U.S.P.Q.2d 1425 (Fed. Cir. 2002).

The Board of Patent Appeals and Interferences held impatentable under the on-sale bar, claims directed to a process for preparing a compound. The event relied on by the Board to trigger the on-sale bar was an agreement with another company to “share technology and coordinate their research efforts,” as part of which the inventor gave a “right to commercialize” his invention in exchange for a series of royalty payments.

The court noted that while the agreement contemplates that products manufactured using the process could potentially be sold, there is no immediate sale or offer for sale. Rather, the agreement is a license granting rights in the invention. Consistent with past precedent, the court holds that a mere license does not trigger the on-sale bar. See, e.g., Mas-Hamilton Group v. LaGard, 156 F.3d 1206, 1217 (Fed. Cir. 1998). The court states that the proper reading of such precedent is that “the offer of a license under a patent and a description of the invention, without more, does not fall within the on-sale bar.”

22. Linear Tech. Corp. v. Micrel, Inc., 275 F.3d 1040, 61 U.S.P.Q.2d 1225 (Fed. Cir. 2001), petition for cert. filed, 71 USLW 3093 (July 3, 2002, No. 02-39).

The first issue presented was whether any pre-sale activity by the patentee constituted an offer to sell sufficient to invoke the on-sale bar. The categories of activity were: 1) solicitation of pricing information from its distributors and sales representatives; 2) publication of preliminary data sheets; 3) communications to the sales force via newsletters and a sales conference; and 4) sales representatives’ pre-critical date requests for samples to give to specific customers.

The Federal Circuit held that, under the Supreme Court’s Pfaff opinion and the court’s own post-Pfaff holding in Group One v. Hallmark Cards, promotional activity must rise to the level of a contractual offer for sale in order to invoke the on-sale bar. As such, the court analyzes the facts under the common law of contracts, which requires that an offer manifest intent to be bound. Here, all pre-sale activities were either promotional or preparatory, and would not have indicated to a reasonable customer that the company intended to be bound. Moreover, the mere fact that this activity may have prompted offers to buy is not sufficient proof that an offer to sell was made.

The second issue addressed was whether the patentee’s decision to enter pre-critical date orders into its system using a “will-advise” system triggered the on-sale bar. The court recognized that under contract law principles, a contract can be entered into even if a price term is not given and the specific date is not ascertainable. However, a contract requires objective assent by the offeree, constituting a “definite and seasonable expression of acceptance.” Here, the offeree (the patentee) responded to the orders by sending a confirmation that it had received but had not booked the offers. This was not enough evidence for the defendant to carry its burden of presenting clear and convincing evidence that a contract was entered into, since a reasonable offeror would understand that the term, “not booked” indicated a lack of acceptance.

23. Scaltech, Inc. v. Retec/Tetra, L.L.C., 269 F.3d 1321, 60 U.S.P.Q.2d 1687 (Fed. Cir. 2001).

An offer by the patentee, to an unrelated party, to use a method for a particular purpose prior to the critical date for commercial purposes is an on sale bar to claims directed to that method. The patentee proposed processing petroleum waste for an unrelated party using a particular method. Even though the proposal was not accepted, the proposal provided “sufficiently definite offer language to constitute a commercial offer for sale” under federal common law.

The offer satisfied the claimed high solids concentration because processing one of the proposed types of wastes using the claimed method inherently produced a high solids concentration satisfying the claim limitation. That the patentee did not appreciate that the process yielded this particular results is immaterial because “[i]f the process that was offered for sale inherently possessed each of the claim limitations, the process was on sale, whether or not the seller recognized that his process possessed the claimed characteristics.”

Whether the patentee had conceived of each limitation of the claimed method is also immaterial because “conception is not required to establish reduction to practice,” which satisfies the second prong of the Pfaff on sale bar inquiry.

The Court affirmed summary judgment of invalidity.

24. Special Devices, Inc. v. OEA, Inc., 270 F.3d 1353, 60 U.S.P.Q.2d 1537 (Fed. Cir. 2001).

There is no “supplier exception” to the on-sale bar. Prior to the critical date, the patentee contracted with an unrelated party to supply the patentee with the commercial embodiment of the all glass header for air bags that would later be the subject of the patent. The patentee also placed an order for 20,000 units of the invention prior to the critical date. While the patentee did not dispute that these transactions were commercial or that the invention was ready for patenting, the patentee sought a supplier exception to the on sale bar.

The Federal Circuit rejected a supplier exception, noting that “neither the statutory text, nor precedent nor the primary purpose of the on-sale bar” permit such an exception. Under the language of 35 U.S.C. § 102(b), it does not matter who places the invention on sale; it only matters that it is on sale. The primary purpose of the on sale bar is encouraging the inventor to enter the patent system promptly. A supplier exception would frustrate this purpose, and a patentee can prevent an on sale bar by promptly filing for a patent.

Summary judgment of invalidity was affirmed.

INVALIDITY — CORROBORATION

25. Trovan, Ltd. v. Sokymatsa, 299 F.3d 1292, 63 U.S.P.Q.2d 1865 (Fed. Cir. 2002).

Two patents, the ‘410 and the ‘855, arose out of a joint development agreement between Trovan and Sokymat. The ‘410 patent issued to Gustafson, an employee of Sokymat, as sole inventor. The ‘855 patent issued to two employees of Trovan. Trovan sued alleging that its two employees were joint inventors of the ‘410 and that Sokymat infringed the ‘855. Sokymat defended on the grounds that Gustafson was the actual inventor of the ‘410 patent and a co-inventor of the ‘855 patent. The district court’s determination that Gustafson was the sole inventor of the ‘410 patent was not appealed. Defendant Sokymat appealed the district court’s holding that Gustafson was not a co-inventor of the ‘855 patent, arguing that because Gustafson was named the sole inventor of the ‘410 patent, and the two patents have “overlapping subject matter,” it follows that Gustafson must be at least a co-inventor of the ‘855 patent.

The Federal Circuit noted that each patent carries a presumption that the listed inventorship is correct. Trovan had the burden to prove by clear and convincing evidence that Gustafson was not the sole inventor of the ‘410 and Sokymat had the same burden with respect to proving that Gustafson was a joint inventor of the ‘855. While “Gustafson’s inventive efforts toward the ‘410 patent may have been probative regarding whether he invented certain features of the ‘855 patent, Sokymat cannot rely on [Trovan’s] failure to meet their burden of proof on the issue of inventorship of the ‘410 patent to satisfy its burden: [I]t is not inconsistent in circumstances like this for a court to find that both parties have failed to meet their respective burdens.”

The court remanded the case for further consideration of the factual issues regarding Gustafson’s alleged status as co-inventor.

26. Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728, 63 U.S.P.Q.2d 1251 (Fed. Cir. 2002), petition for cert. filed, (Sept. 5, 2002, No. 02-373).

Evidence of patent invalidity due to prior public use based solely on oral testimony is looked upon with disfavor, and will not meet the clear and convincing evidence standard when given years after the events they relate, by interested witnesses, and not corroborated by written evidence. This is true regardless of whether the witnesses themselves are considered not creditable.

Here, six witnesses all testified there was a prior public use, but the events occurred at least eight years prior to the testimony, the witnesses all had some relation to the defendant, and had no written corroboration beyond sketches made at the time of the oral depositions.

The findings of the jury on anticipation were set aside and the case remanded.

27. Loral Fairchild Corp. v. Matsushita Elec. Indus. Co., Ltd., 266 F.3d 1358, 60 U.S.P.Q.2d 1361 (Fed. Cir. 2001).

In order to antedate a prior art reference by establishing an actual reduction to practice, “an inventor’s testimony must be corroborated by independent evidence.” Under the rule of reason analysis used to assess the sufficiency of corroborating evidence, “the inventor’s testimony must be sufficiently corroborated by independent evidence, but not necessarily documentary evidence.” Here, the inventor filed a declaration stating that he had reduced the invention to practice prior to the publication date of the prior art reference. A co-worker of the inventor testified that the claimed process was begun as soon as masks necessary to practice the process were received. The patentee submitted such a mask dated prior to the prior art reference, as well as a proposal to the Air Force for producing devices using the claimed method dated before the prior art.

The Federal Circuit held that the corroborating testimony and evidence was sufficient to avoid summary judgment, and the district court erred in requiring “documentary evidence of test results confirming process performance.” The Court reversed summary judgment of invalidity for obviousness.

28. Sandt Tech., Ltd. v. Resco Metal and Plastics Corp., 264 F.3d 1344, 60 U.S.P.Q.2d 1091 (Fed. Cir. 2001).

In asserting a claim of prior inventorship under 35 U.S.C. § 102(g), an alleged prior inventor must present corroboration. “Documentary or physical evidence that is made contemporaneously with the inventive process provides the most reliable proof that the inventor’s testimony has been corroborated.” Circumstantial evidence about the inventive process and oral testimony from someone other than the alleged inventor may also provide corroboration.

“[P]ost-invention oral testimony is more suspect, as there is more of a risk that the witness may have a litigation-inspired motive to corroborate the inventor’s testimony, and that the testimony may be inaccurate.” In assessing whether a witness’ testimony provides corroboration, a court may look to the following factors: “1) the relationship between the corroborating witness and the alleged prior user; 2) the time period between the event and trial; 3) the interest of the corroborating witness in the subject matter in suit; 4) contradiction or impeachment of the witness’ testimony; 5) the extent and details of the corroborating testimony; 6) the witness’ familiarity with the subject matter of the patented invention and the prior use; 7) probability that a prior use could occur considering the state of the art at the time; and 8) impact of the invention on the industry, and the commercial value of its practice.”

The prior user presented a prior abandoned patent application, a letter responding to an inquiry from a business for the invention including drawings from the patent application, testimony from an employee of the business soliciting the invention and invoices for parts used to create the prototype. Based on this corroborating evidence, the Federal Circuit affirmed summary judgment of invalidity.

PRIOR INVENTION — ANTICIPATION

29. Dow Chem. Co. v. Astro-Valcour, Inc., 267 F.3d 1334, 60 U.S.P.Q.2d 1519 (Fed. Cir. 2001), cert. denied, 122 S. Ct. 1544 (2002).

Under 35 U.S.C. § 102(g), a prior inventor need not have known he was an “inventor” for the prior act to be invalidating.

The date of conception by a prior inventor is the date on which the inventor first appreciates what he or she made. However, the inventor need not “be the first to appreciate the patentability of the invention.” “[S]uch a state of mind is not required.” Thus, the prior inventor need only appreciate the product made. Recognition that the product is a legally patentable invention is immaterial for purposes of § 102(g). Summary judgment of invalidity was affirmed.

OBVIOUSNESS

30. In re Lee, 277 F.3d 1338, 61 U.S.P.Q.2d 1430 (Fed. Cir 2002).

An obviousness rejection based on a combination of references must be supported by “objective evidence of record;” it is insufficient to base such a rejection merely on “common knowledge or common sense.”

The examiner rejected claims for a “method of automatically displaying the functions of a video display device” on the ground of obviousness by combining a patent describing a television set having a menu display with a video game handbook describing the game as having a video display with a “demonstration mode.” The patent made no reference to demonstrations and the video game handbook make no mention of adjusting video functions. The examiner stated only that it would be obvious to a person of ordinary skill in the art to combine the references. The Patent Appeals Board upheld the rejection, stating that a conclusion of obviousness may be made from common knowledge and common sense without any specific hint or suggestion in a particular reference.

Observing that findings of the PTO must receive a degree of deference under the Administrative Procedure Act, the Federal Circuit here nonetheless noted that as an agency, it is required “not only [to] have reached a sound decision, but [to] have articulated decisions for that decision.” In the case of obviousness rejections, past Federal Circuit law has repeatedly demonstrated the need to “include[] evidence relevant to the finding of whether there is a teaching, motivation, or a suggestion to select and combine . . . references . . . .” Further, specific reasoning must be given as to why the references should be combined. Thus, “the ‘common knowledge and common sense’ on which the Board relied . . . are not the specialized knowledge and expertise contemplated by the Administrative Procedure Act” and are insufficient to support a rejection.

The court, noting that the reasoning of the Board was not explicitly unlawful, just inadequately explained, then remanded the case back to the Board so that it might “set forth findings and explanations needed for ‘reasoned decision making.’”

DOCTRINE OF EQUIVALENTS AND PROSECUTION HISTORY ESTOPPEL

31. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., ___ U.S. ___, 122 S. Ct. 1831, 152 L. Ed. 2d 944 (2002).

Prosecution history estoppel can limit the scope of a claim that has been narrowed by amendment to satisfy any patent law requirement, not just amendments made to avoid prior art. However, prosecution history estoppel does not provide a per se complete bar to use of the doctrine of equivalents on an amended claim. The amendment must be examined to determine the degree of subject matter surrendered by the amendment, although a rebuttable presumption of surrender of all the territory between the original claim and the amended claim will apply.

Based on the Supreme Court’s ruling in Warner-Jenkinson, the Federal Circuit created a per se rule that applied estoppel to bar any equivalent to an element of a claim, when that claim was narrowed by amendment to comply with a requirement of the Patent Act, overruling precedent that used a flexible approach. The Supreme Court overturned this per se rule, noting that the rule would go too far, by ignoring the purpose of the doctrine of equivalents, which is to capture equivalents that were unforeseen at the time the claim language was chosen. The Court mentioned three instances in which the presumption of surrender may be overcome, (1) “the equivalent may have been unforseeable at the time of the application; (2) the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; or (3) there may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question.

The judgment of the Federal Circuit was vacated and the case remanded to determine whether the narrowing amendments surrendered the equivalents in question.

32. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., No. 95-1066, 2002 WL 31102602 (Fed. Cir. Sept. 20, 2002).

Upon remand from the Supreme Court, the Federal Circuit ordered the parties to submit briefs on the issues of: 1) whether rebuttal of the presumption of surrender by a narrowing amendment should be a question of law or fact and what role a jury should play in that determination, 2) what factors should be considered in this determination, 3) whether remand to the district court would be necessary if factual findings were required, and 4) if Festo could rebut the surrender presumption if there were no remand to the district court.

33. Schwing GmbH v. Putzmeister Aktiengesellschaft, No. 01-1615, 2002 WL 31109922 (Fed. Cir. Sept. 24, 2002).

A remand to the district court to determine degree of surrender under Festo is not warranted when an applicant has made a deliberate decision to describe in the specification as flawed a prior art structure similar to the alleged equivalent. However, if a reasonable factfinder could conclude that two configurations could perform substantially the same function in substantially the same way, a remand is proper.

Here, in an appeal of summary judgement of noninfringement over two types of concrete pumps, the alleged infringer had used an embedded metal ring, which the patent holder claimed was equivalent to its claimed “annular extension.” The patent holder had specifically identified and criticized the use of such a ring when distinguishing its invention during the prosecution from prior art that used such a metal ring. Noting that Schwing could not “now overlook that deliberate decision and reclaim that subject matter through the doctrine of equivalents,” the Federal Circuit affirmed the summary judgment.

With respect to another allegedly infringing device where the patent holder viewed a “grooved seating” as equivalent to its annual extension, the court found that a reasonable factfinder could indeed conclude that the two configurations could perform substantially the same function in substantially the same way to achieve substantially the same result, vacated the judgement of the district court. The “annual extension” limitation in issue had been amended in prosecution only with respect to its location, not its structure. The Court remanded so that the district court could determine whether Schwing had rebutted the presumption that the amendment barred equivalence.

34. Johnson & Johnston Assocs. Inc. v. R. E. Serv. Co., Inc., 285 F.3d 1046, 62 U.S.P.Q.2d 1225 (Fed. Cir. 2002) (en banc).

Subject matter disclosed in a patent but not claimed is dedicated to the public. Thus, if the specification describes an equivalent of a claimed element, that claim element cannot be extended under the doctrine of equivalents to encompass that disclosed, but unclaimed, subject matter. This en banc decision follows Maxwell v. Baker and explicitly overrules YBM Magnex, which purported to limit this rule to situations where the patent disclosed “an unclaimed alternative distinct from the claimed invention.”

Here, Johnson & Johnson had claimed an assembly to be used in the creation of circuit boards where thin fragile copper foil sheets were adhered to stiffer sheets of aluminum for easier handling. While the specification noted that materials other than aluminum, “such as stainless steel,” could be used in its place, the claims at issue recited only the use of aluminum substrate sheets. The defendant made laminates similar to those described in the patent, but which used steel substrates instead of aluminum. Upon appeal from a finding of willful infringement, the defendant claimed that Johnson had dedicated use of non-aluminum substrate sheets to the public by not including it in the claims.

The Federal Circuit noted a long line of cases, going back to the 1880s, supporting the “predominant role of claims” and reaffirmed the public dedication doctrine. To do otherwise would “conflict with the primacy of the claims in defining the scope of the patentee’s exclusive right.” It was also thought that ruling otherwise would allow patentees to “claim an invention narrowly to avoid prosecution scrutiny and later use the doctrine of equivalents to capture unclaimed features mentioned in the specification.” The Circuit ruled that the district court had erred as a matter of law in concluding infringement and reversed.

Four concurring opinions were filed, and a dissent was filed by Judge Newman, author of YBM Magnex.

35. Abbott Labs. v. Dey, L.P., 287 F.3d 1097, 62 U.S.P.Q.2d 1545 (Fed. Cir. 2002), petition for cert. filed, (Sept. 10, 2002, No. 02-396).

When two patent applications have no formal relation to each other and are presented to the PTO as distinct inventions, statements made in the course of one application should not create prosecution history estoppel as to the other patent. This is true even if the two inventions share an inventor in common.

Here, a district court issued summary judgement of noninfringement of a patent for a lung surfactant composition. The court relied on statements made during an earlier patent prosecution by a set of inventors that included the inventor of the patent at issue. The earlier patent had included phospholipid amounts of up to 95.5% by weight, whereas the patent at issue claimed surfactants containing phospholipid amounts of up to only 90.7% by weight. During prosecution of the earlier patent, the applicants had argued that only the chemical compositions it claimed could have the desired effects.

The Federal Circuit disagreed with the district court that the change in amounts and statement in the earlier prosecution had any estoppel effect, considering that the statement was made before the second patent was filed and that the second application was not a continuation, continuation-in-part, or a divisional application of the first. Thus there was no estoppel.

REPAIR/RECONSTRUCTION

36. Surfco Hawaii v. Fin Control Sys. Pty. Ltd., 264 F.3d 1062, 60 U.S.P.Q.2d 1056 (Fed. Cir. 2001), cert. denied, 122 S. Ct. 2619 (2002).

“[P]ermissible ‘repair’ includes replacement of parts that are neither broken nor worn.” The patents at issue related to the structure and mechanism whereby the fin is releasably engaged in the body of a surf craft. The alleged infringer sold replacement fins for the patented craft. The Federal Circuit reversed summary judgment that replacement of the unworn and unbroken fins was infringement and granted summary judgment of noninfringement because such replacement is permissible repair. The Federal Circuit reasoned that premature replacement of parts by the purchaser of a patented device constitutes repair, so long as “there is not reconstruction of the entirety as to make a new article.” While extension of the useful life of an article is the usual reason for modification, it is not the only reason allowed by law.

CERTIFICATES OF CORRECTION

37. Superior Fireplace Co. v. Majestic Prods. Co., 270 F.3d 1358, 60 U.S.P.Q.2d 1668 (Fed. Cir. 2001).

A party challenging the validity of a certificate of correction bears the burden of proving invalidity by clear and convincing evidence. The Federal Circuit refused to address whether the APA standards of appellate review supplant the clear and convincing standard because the parties had not briefed the issue and resolution of the issue was immaterial to the outcome of the case.

The language of 35 U.S.C. § 255 recites that “a mistake of a clerical or typographical nature, or of minor character” which was not the fault of the PTO may be corrected through a certificate of correction. While § 255 permits broadening corrections of clerical or typographical mistakes in the claims, such correction is permitted “only where it is clearly evident from the specification, drawings, and prosecution history how the error should appropriately corrected.” Although this requirement is not present in the statutory language, the Federal Circuit deemed this “extra-textual requirement” implicit in the statute to protect the public against unanticipated claim broadening and in view of the public notice function of claims. “A mistake that, if corrected, would broaden the scope of a claim . . . cannot be a mistake of ‘minor character.’” Thus, mistakes that would broaden the scope of the claim are not correctable through a certificate of correction under § 255.

The Federal Circuit sustained the district court’s ruling that the certificate of correction was invalid.

PATENTABLE SUBJECT MATTER — PLANTS

38. J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124, 122 S. Ct. 593, 60 U.S.P.Q.2d 1865 (2001).

The Supreme Court held that “newly developed plant breeds fall within the terms of [35 U.S.C.] § 101.” In reaching this conclusion, the Court determined that the Plant Patent Act of 1930, 35 U.S.C. §§ 161-164, and the Plant Variety Protection Act, 7 U.S.C. § 2321 et seq., are not the exclusive means of obtaining a federal statutory right to exclude other from reproducing, selling or using plants or plant varieties.

Relying on Diamond v. Chakrabarty, 447 U.S. 303, 100 S. Ct. 2204, 65 L. Ed. 2d 144 (1980), the Court found that the language of 35 U.S.C. § 101 “is extremely broad,” and encompasses living things. Nothing in the history of the PPA and the PVPA suggests that utility patent protection is not available for plants. Thus, these provisions provide alternative means of protecting plants, but do not remove plants from the broad scope of § 101.

DUTY TO INQUIRE/INEQUITABLE CONDUCT

39. Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp., 267 F.3d 1370, 60 U.S.P.Q.2d 1482 (Fed. Cir. 2001).

A prosecuting attorney has a duty to investigate a possibly material event when the attorney has notice of the event. “[N]otice of a possibly material event — a sale, public use, publication, issuance of a patent, occurring on or about one year before the application is filed — arises when information of which the attorney is aware suggests the existence of specific information that may be material.” Counsel can reasonably rely on information provided by the client and need not pursue a “fishing expedition to obtain information” unless “there is reason to question the accuracy or completeness of the information or doubt the adequacy of the client’s own investigation into material facts.” However, an attorney cannot ignore notice of information that appears material and questionable to avoid his or her duty of disclosure. “Thus, no duty to inquire arises unless counsel is on notice of the likelihood that specific, relevant, material information exists and should be disclosed.”

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