NicolasSeckel : CAFC Alert

Inventorship disputes raise difficult issues; involvement of State universities adds layers of complexity

Nicolas Seckel | September 6, 2013

University of Utah v. Max-Planck-Gesellschaft 

August 19, 2013

Panel:  Moore, Reyna and Wallach.  Opinion by Reyna.  Dissent by Moore.

Summary:

This case started with the University of Utah suing the University of Massachussetts and others to obtain correction of inventorship in a group of patents co-owned by UMass and the other defendants.  But the main issues in this appeal relate to the status of the plaintiff UUtah and initial co-defendant UMass as State entities.

To overcome UMass’ sovereign immunity defense (a State can be sued by another State only in the Supreme Court under Article III of the Constitution), UUtah amended its complaint to name individual UMass officials, instead of UMass itself.

The District Court held that the lawsuit could proceed, and the Federal Circuit affirms on the grounds that (1) UMass is not a “real party of interest” because deciding inventorship does not involve a core state interest, and (2) UMass is not an “indispensable party” because the officials can adequately represent the interest of UMass as co-owner of the patents.


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Entirely reasonable? “Black box” claim interpretation by split Federal Circuit panel leaves us in the dark

Nicolas Seckel | February 13, 2013

Harris Corp. v. Fed Ex Corp. (non-precedential)

January 17, 2013

Panel:  Lourie, Clevenger, and Wallach.  Opinion by Clevenger.  Dissent by Wallach

Summary:

Over a dissent, the Federal Circuit panel makes a strict interpretation of “antecedent basis,” which results in a reversal of the District Court’s claim interpretation, and a remand to re-evaluate the infringement issue.

Harris’s patents cover methods and systems for using spread spectrum radio signals to send flight data from a plane’s “black box” to an airport receiver at the end of the flight.  The invention includes steps of generating, accumulating and storing flight data in the plane during the flight, followed by a step of “transmitting the accumulated, stored generated aircraft data” once at the airport.

At the District Court, a jury found that Fed Ex willfully infringed Harris’s patents by using a “design-around” system that transmits all flight data except an optional 5-minute segment.

On appeal, the Federal Circuit panel majority holds that Harris patent claims are limited to the transmission of “all data generated during the flight,” not just any data subset representative of the flight.  The panel’s view is that the narrower interpretation is “entirely reasonable” since the transmitting step refers to the generating step.

In contrast, the dissent sees the claim language as open, so that it would be “counterintuitive” to require that all the generated data must be transmitted.


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Federal Circuit Judges Spar over Post-FDA-Approval Application of Hatch-Waxman Safe Harbor

Nicolas Seckel | September 4, 2012

Momenta Pharma v. Amphastar Pharma

August 3, 2012

Panel:  Rader, Dyk and Moore.  Opinion by Moore.

Summary:

Momenta sued Amphastar for infringement of Momenta’s drug testing method.  Amphastar argued that its use of Momenta’s patented method for testing Amphastar’s commercial batches is covered by the exception to infringement for activities related to FDA regulatory review under the “safe harbor” provision of section 271(e)(1). The District Court issued a preliminary injunction against Amphastar, holding that the “safe harbor” is limited to pre-FDA approval activities.  The Federal Circuit vacates the injunction.  Amphastar’s activities took place after FDA marketing approval of Amphastar’s product, but the plain language of the statutory “safe harbor” covers all uses of a patented invention that are “reasonably related” to submission of information under FDA regulatory review.  Since Amphastar’s manufacturing batch testing was mandated by FDA for commercialization, and not “routine” information gathered “voluntarily,” Amphastar’s use of Momenta’s patented method is exempted by the “safe harbor.”


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Prosecution Argument Bars Later Recapture Through Broadening Reissue

Nicolas Seckel | August 29, 2012

Greenliant Systems, Inc. v. Xicor LLC

August 22, 2012

Panel:  Linn, Plager and Dyk.  Opinion by Dyk

Summary:

Xicor obtained a patent claiming a semiconductor device with a tunneling layer formed by low pressure chemical vapor (CVD) deposition using tetraethylorthosilicate (TEOS).   Xicor sought and obtained reissue of the patent with device claims that did not recite the use of TEOS.   Subsequently, Greenliant sued Xicor for declaratory judgment of invalidity of the reissue claims based on recapture rule, which prohibits recapture via reissue of subject matter surrendered in order to overcome prior art during prosecution of the original patent.  The District Court held the reissue claims invalid, and the Federal Circuit affirms.  Xicor had repeatedly argued during prosecution of the original patent that the product-by-process limitation of using TEOS imparted structural limitations to the final product.  This is sufficient for the recapture rule to apply, even if Xicor now recognizes that the structure of the tunneling layer does not actually depend on the material used for the CVD process, but on deposition conditions such as temperature and pressure.


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Computer-implemented “control means” requires description of step-by-step algorithm even if not key feature of claimed invention

Nicolas Seckel | April 4, 2012

Ergo Licensing, LLC v. Carefusion 303, Inc.

March 26, 2012

Panel: Newman, Linn and Moore.  Opinion by Moore.  Dissent by Newman.

Summary

Another reminder that under US patent law, a “means-plus-function” element recited in a patent claim covers only the corresponding structures described in the specification and their equivalents.  If insufficient or no corresponding structures are described in the specification, the claim is invalid as indefinite.  The rule is strictly applied even if the functional element is only a peripheral aspect of the invention.  Here, the patent claims were directed to a multichannel drug infusion system.  A “control means” was recited (for controlling the motor that adjusts the drug dosage).  The Federal Circuit affirms the invalidity of the claims.  The specification disclosed a “control device,” but no “step-by-step process.” Since the recited function could not be performed by a general computer without special programming, disclosure of an algorithm was required to avoid “pure functional claiming.”


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