The Patent Court revisits IPXL doctrine regarding prohibition on hybrid claiming
| February 29, 2012
HTC Corporation v. IPCom GmbH & Co.
January 30, 2012
Panel: Bryson, Linn and O’Malley. Opinion by O’Malley.
Summary
HTC Corporation and HTC America, Inc. sued IPCom GmbH & Co., KG seeking a declaration that it did not infringe claims of IPCom patents. IPCom counterclaimed alleging infringement. HTC moved for summary judgment of invalidity on the ground that claims 1 and 18 of U.S. Patent No. 6,879,830 owned by IPCom were indefinite because (1) they claimed both an apparatus and method steps; and (2) the means-plus-function limitation “arrangement for reactivating,” found in the last paragraph of claims 1 and 18, was indefinite because the patent failed to disclose structure corresponding to the claimed function. On summary judgment, the district court agreed with HTC that claims 1 and 18 were indefinite based on the Federal Circuit’s precedent in IPXL Holdings, L.L.C. v. Amazon.com, Inc prohibiting hybrid claiming of apparatus and method steps in the same claim, but rejected HTC’s argument that the claims were indefinite for failing to disclose the structure corresponding to the means-plus-function limitation. On appeal, the Federal Circuit reversed the district court’s judgment of invalidity based on hybrid claiming, but did not disturb the district court’s finding regarding the means-plus-function limitation. The Federal Circuit held that the district court misconstrued the asserted claims and that the patent did not describe any improper hybrid claiming of apparatus and method steps in the same claim because the claims, when properly construed, were drawn to only an apparatus and the prohibition on hybrid claiming under IPXL was inapplicable to claims 1 and 18.
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Tags: claim construction > hybrid claiming > indefiniteness > means-plus-function > preamble-within-a-preamble
CAFC Allows Willful Infringer to Continue Infringements for an “Ongoing Royalty” Due to “the Public’s Interest to Allow Competition in the Medical Device Arena”
| February 16, 2012
Bard Peripheral Vascular, Inc., et al. v. W.L. Gore & Associates, Inc.
February 10, 2012
Panel: Gajarsa, Linn and Newman. Opinion by Gajarsa. Dissent by Newman.
Summary
This decision concludes a forty-year-long story that began in 1973 between two cooperating individuals that independently filed patent applications for vascular grafts in 1974. Those applications went to interference in 1983 and have been the subject of ongoing litigation since, concluding now in the current CAFC decision. The Arizona district court from which the present case was appealed expressed that this was “the most complicated case the district court has [ever] presided over.” In this case, the Gore inventor was the first to both 1) conceive of the invention and 2) file a patent application in 1974 (i.e., filing 6 months prior to the Bard inventor), but Gore lost in an interference before the Patent Office. Now, Gore is found to be willfully infringing the patent that was awarded to Bard, and is subjected to doubled damages (i.e., totaling $371 million) and attorney’s fees (i.e., totaling $19 million). However, despite these findings, the CAFC allows Gore to continue infringing, declining a permanent injunction and awarding reasonable royalties in the amount of between 12.5% to 20% for future infringements due to the weight of “the public interest to allow competition in the medical device arena.”
Tags: damages > first-to-file > inventorship > ongoing royalty > permanent injunction > willfulness
CAFC reviews and applies the doctrine of claim construction
| February 11, 2012
Thorner v. Sony
February 1, 2012
Panel: Rader, Moore, Aiken. Opinion by Moore.
Summary
The CAFC reverses a determination by the district court that there was no infringement because a limitation was improperly imported into the claim. Because the district court improperly limited the term “attached to said pad” to mean attachment only to an external surface and erred in its construction of the term “flexible”, the CAFC vacated and remanded.
Tags: claim construction > disavowal > lexicographer > ordinary and customary meaning
CAFC provides guidance for patent eligibility of computer aided methods
| February 1, 2012
Dealertrack v. Huber
January 20, 2012
Panel: Linn, Plager Dyk. Opinion by Linn. Dissent by Plager.
Summary
The CAFC affirmed the district court’s grant of summary judgment of invalidity for patent ineligibility under § 101. The CAFC stated that the claim at issue recited a “computer aided method” without reciting how the computer aids the method, the extent to which a computer aids the method, or the significance of a computer to the performance of the method. The claims are invalid as being directed to an abstract idea preemptive of a fundamental concept or idea that would foreclose innovation in this area. Other issues were addressed in the opinion; however, this discussion only addresses the issue of patent eligibility under § 101.
Tags: §101 > bilski > computer aided method > patent eligible subject matter
