Federal Circuit Reasonably Certain Biosig’s Patent Not Indefinite
| April 29, 2015
Biosig Instruments v. Nautilus
April 27, 2015
Before: Newman, Schall, and Wallach. Opinion by Wallach.
Summary
On remand from the Supreme Court, the Federal Circuit applies the “new” indefiniteness test announced by the Supreme Court in “Nautilus II” and concludes that the disputed term “spaced relationship” in Biosig’s patent claims is not indefinite. After a two year hiatus from the first time the Federal Circuit decided this case in April 2013 in “Nautilus I,” the Federal Circuit comes to the same conclusion as it did under the previous indefiniteness test.
Claimed Narrow Range Must Be Shown To Be Critical To Operability Of Invention To Avoid Anticipation By Broader Range
| April 27, 2015
Ineos USA LLC v. Berry Plastics Corp.
April 16, 2015
Before: Dyk, Moore and O’Malley. Opinion by Moore.
Background: Appeal from U.S. District Court for Southern District of Texas which granted summary judgment that patent asserted by Ineos is invalid for anticipation.
Summary:
U.S. Patent No. 6,846,863 (the ‘863 patent) claims a polyethylene-based composition which can be used to form shaped products, in particular bottle caps. The composition contains a lubricant to optimize the cap’s slip properties. The ‘863 patent asserts that the composition does not impart a bad odor and flavor to food products stored in contact with the composition, which is an improvement over prior art polyethylene composition containing a lubricant.
Claim 1 is the only independent claim:
1. Composition comprising at least
[1] 94.5% by weight of a polyethylene with a standard density of more than 940 kg/m3,
[2] 0.05 to 0.5% by weight of at least one saturated fatty acid amide represented by CH3(CH2)nCONH2 in which n ranges from 6 to 28[,]
[3] 0 to 0.15% by weight of a subsidiary lubricant selected from fatty acids, fatty acid esters, fatty acid salts, mono-unsaturated fatty acid amides, polyols containing at least 4 carbon atoms, mono or poly-alcohol monoethers, glycerol esters, paraffins, polysiloxanes, fluoropolymers and mixtures thereof, and
[4] 0 to 5% by weight of one or more additives selected from antioxidants, antacids, UV stabilizers, colorants and antistatic agents. (emphasis added)
The CAFC opinion inserted the bracketed numbers into the claims to identify the components of the composition. In addition to the base polyethylene (component 1), the only required component is the specifically defined saturated fatty acid amide (component 2, which serves as a primary lubricant.)
Claim 1 recites a range of 0.05 to 0.5% by weight for the lubricant. Berry asserts that claim 1 is anticipated by U.S. Patent No. 5,948,846 (the ‘846 reference patent) which discloses a polyethylene based composition containing stearamide, a compound falling within the group of saturated fatty ester amide (2) recited in claim 1 of the ‘863 patent. The broad range of 0.1 to 5 parts by weight disclosed in the ‘846 reference patent for component (2) overlaps with the relatively narrow range recited in claim 1 of the asserted patent, as shown below (not to scale):
The ‘846 reference patent also describes the amount of the lubricant as being “at least 0.1 part by weight per 100 parts of polyolefin, in particular of at least 0.2 parts by weight, quantities of at least 0.4 parts by weight being the most common ones”.
The district court found claim 1 and the dependent asserted claims to be anticipated by the ‘846 reference patent, and granted summary judgment for Berry Plastics.
The Supreme Court’s Recent Lowering of the Evidentiary Standard for Awarding Legal Fees in the Octane Case Turns-Up the Heat on Aggressive Patentees
| April 24, 2015
Oplus Technologies, Ltd. v. Vizio, Inc.
April 10, 2015
Before: Prost, Moore, and O’Malley. Opinion by Moore.
Summary
Despite the district court’s determination that non-practicing-entity-plaintiff Oplus Technologies, Ltd.’s counsel, Niro, Haller & Niro, had engaged in “exceptional” litigation misconduct, the district court determined that attorney fees should not be awarded to defendants. Upon appeal by defendant Vizio, Inc. of the denial of attorney fees, the Federal Circuit vacated and remanded the decision back to the district court to force the district court to reconsider its decision not to award attorney fees in light of the district court’s own fact findings showing a high extent of harassing, unprofessional and vexatious misconduct of plaintiff’s counsel and in view of the Supreme Court’s subsequent changing of the evidentiary standard for awarding legal fees in the Octane case to a preponderance of the evidence standard from the former clear and convincing evidence standard.
Tags: attorney fees > exceptional case > expert witness fees > legal fees > non practicing entities > npe
Claim terms narrowed by prosecution record
| April 23, 2015
Vasudevan Software, Inc., v. MicroStrategy, Inc.
April 3, 2015
Before: Chen, Linn and Hughes. Opinion by Linn.
Summary:
The claims of the patents at issue recite a system that accesses “disparate … databases.” The CAFC stated that while this term means “incompatible,” the plain meaning of the term and the specification do not explain how extensive that incompatibility must be. The district court analyzed statements in the prosecution history regarding this term and the arguments made for distinguishing the prior art to construe the term. The CAFC affirmed the district court’s claim construction. The CAFC also reversed the district court’s summary judgment of invalidity regarding written description and enablement, and remanded to the district court.
The act of contemplation then creates the thing created (Isaac D’Israeli).
| April 21, 2015
Kennametal, Inc., v. Ingersoll Cutting Tool Company.
March 25, 2015
Before: Newman and Linn. Opinion by Linn.
Summary:
The CAFC affirmed the decision of the Patent Trial and Appeal Board (the “Board”) in an inter partes reexamination of U.S. Patent No. 7,244,519 (the ‘519 Patent) in which the Board (i) entered a new anticipation ground of rejection asserted by Ingersoll over US. Patent No. 6,554,548 (Grab); and (ii) affirmed the Examiner’s obviousness rejection.
The CAFC held that “contemplation” of a method in a prior art reference is sufficient disclosure for a rejection under §102. The CAFC further held that a finite number of solutions were present in Grab for the specific claimed combination, and that the motivation to select the specific combination was not undermined by the known problem of cobalt capping.
Claim term “at least one component of [a unit]” excludes the entire unit – expert testimony cannot override intrinsic evidence
| April 17, 2015
Enzo Biochem Inc. v. Applera Corp. (Precedential)
March 16, 2015
Before: Prost, Newman and Linn. Opinion by Prost, Dissent by Newman.
Summary
In this case, grammatical construction and invention “purpose” beat expert testimony and claim differentiation, leading to reversal of the District Court’s claim interpretation.
One might have thought that the Federal Circuit would make a point of carefully applying the different standards of review when a District Court’s claim construction relied in part on extrinsic evidence (“clear error” for findings based on extrinsic evidence, instead of “de novo” review for intrinsic evidence, see Teva Pharm. USA, Inc. v. Sandoz, Inc. (Jan. 20, 2015)).
This decision suggests a different trend, toward minimizing the importance of extrinsic evidence in claim interpretation, which allows the Federal Circuit to maintain its customary high level of scrutiny.
