CAFC says reissued patent can’t sail into safe harbor
| July 8, 2015
G.D. Searle LLC et al. v. Lupin Pharmaceuticals, Inc., et al.
June 23, 2015
Before: Prost, Bryson, and Hughes. Opinion by Bryson
Summary
The CAFC strictly construes the “safe harbor” provision of 35 USC § 121 and casts doubt on whether there are any circumstances in which reissue can be used to correct failure to file a divisional application.
“Strong Presumption” Not So Strong After all
| June 25, 2015
Williamson v. Citrix
June 16, 2015
Opinion by Linn (joined by nine other Judges), Dissenting Opinion by Newman-Decided.
Summary:
En banc CAFC expressly overrules the “strong” presumption that a limitation lacking the word “means” is not subject to § 112, para. 6 and applies the presumptions prior to Lighting World, which do not require any heightened evidentiary showing. CAFC also overrules the strict requirement of “a showing that the limitation essentially is devoid of anything that can be construed as structure.”
When a claim term does not recite the word “means,” the presumption can be overcome and § 112, para. 6 will apply if one demonstrates that the claim term fails to “recite sufficiently definite structure” or recites “function without reciting sufficient structure for performing that function.” That is, the standard is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”
Tags: 112 6th paragraph > 112(f) > en banc > functional claiming > Means for > means plus function > strong presumption
CBM Petitions – Second Chances Can Be Tough
| June 17, 2015
Travelocity.com L.P., Priceline.com Inc., and Expedia, Inc. v. Cronos Technologies, LLC (Case CBM2015-00047)
June 15, 2015
Before: Jennifer S. Bisk, James B. Arpin, and Lynne E. Pettigrew, Administrative Patent Judges. Opinion by Arpin.
Summary
The Patent Trial & Appeal Board (“PTAB”) decided not to institute a covered business method patent review (“CBM”) of any challenged claim of U.S. Pat. No. 5,664,110 (“the ‘110 patent”). Travelocity, Priceline, and Expedia’s (“Petitioner”) joint request was denied because the Petition included “substantially similar arguments presented and the same references applied” in CBM2014-00082, an earlier Petition filed by Petitioner that was denied by the PTAB.
The PTAB expressly cautioned against taking a “second bite at the apple” and remarked that “a decision on a petition for covered business method review is not simply part of a feedback loop by which a petitioner may perfect its challenges through subsequent filings.”
Reissue cannot modify Claim Construction determined for repeated Original Patent Claims
| June 3, 2015
ArcelorMittal France v. AK Steel Corp. et al.
May 12, 2015
Before: Dyk, Wallach and Hughes. Opinion by Hughes.
Summary
ArcelorMittal had filed suit on the ‘805 patent against the appellees. However, the construction of a key term “very high mechanical resistance” was unfavorable to ArcelorMittal and a jury subsequently found the claims of the ‘805 patent not infringed and invalid. During appeal of the decision ArcelorMittal filed a Reissue application at the USPTO which included a new dependent claim with a broader construction of “very high mechanical resistance” than that construed during the judicial action. The CAFC affirmed the District Court’s claim construction but remanded the case on other grounds.
ArcelorMittal filed new suits based on the Reissue patent, but the District Court granted Summary Judgment invalidating the claims on the basis that the term “very high mechanical resistance” was earlier construed during the ‘805 litigation narrower than the subsequent claims of the Reissue patent. The CAFC affirmed the District Court asserting that under the law-of-the-case-doctrine and mandate rule, ArcelorMittal could not use the Reissue process at the PTO to broaden construction after the decision on the ‘805 patent.
In a design patent infringement case, 35 U.S.C. §289 authorizes the award of total profit from the article of manufacture bearing the patented design
| May 27, 2015
Apple Inc. v. Samsung Electronics Co., Ltd. et al.
May 18, 2015
Before: Prost, O’Malley and Chen. Opinion by Prost.
Summary
The CAFC affirmed the jury’s verdict on the design patent infringements and the validity of utility patent claims, and the damages awarded for these infringements appealed by Samsung. However, CAFC reversed the jury’s findings that the asserted trade dresses are protectable. Regarding the design patent infringement issue, Samsung proposed that functional aspects of the design patents should be “ignored” in their entirety in a design patent infringement analysis, the CAFC disagreed. Moreover, the CAFC found that the district court did not err by allowing jury to award damages based on Samsung’s entire profits on its infringing smartphones.
サムスン社は、控訴審において、意匠特許の機能的部分は意匠特許侵害の分析において無視されるべきであると主張した。CAFCは、機能的部分の装飾的な特徴は意匠特許によりカバーされるため、意匠特許侵害の分析において機能的部分を無視すべきというサムスン社の主張には同意しなかった。また、サムスン社は、意匠特許侵害の損害賠償は、侵害商品の全体としての利益（entire profit）に基づいて計算されるべきでないと主張したものの、特許法第289条は、意匠特許侵害の損害賠償を侵害商品の全体としての利益（entire profit）に基づいて計算することを可能としているため、CAFCはこの主張にも同意しなかった。
Under the AIA, a False Marking Action Can Be Brought by a Potential Competitor who Suffers a Competitive Injury
| May 20, 2015
Sukumar v. Nautilus, Inc.
May 4, 2015
Before: Prost, Newman and Reyna. Opinion by Prost.
Summary
The CAFC herein affirms the District Court grant of Nautilus’ motion for summary judgment to dismiss Sukumar’s false marking suit. The District Court held that Sukumar had not suffered a competitive injury and thus, lacked standing to enforce 35 U.S.C. 292. The CAFC herein determines who has standing to bring a false marking action.
PTO Need Not Terminate Inter Partes Re-exam Even After Parties Have Settled on Validity.
| May 18, 2015
Automated Merchandising Sys. v. Lee
April 10, 2015
Before: Prost, Taranto, Fogel; Opinion by Taranto
Summary:
Inter partes re-exams were initiated during the litigation. Parties settled the litigation, and the court issued consent judgment. Patentee requested PTO to terminate the re-exams, but PTO refused to terminate alleging that there was no “decision” by the court. Patentee sued PTO under Administrative Procedure Act (APA). District court granted summary judgment in favor of PTO. CAFC affirmed the summary judgment.
侵害訴訟中に当事者系再審査が開始された。その後当事者は和解し、それに基づいて地裁は和解判決を下した。特許権者は、米国特許庁に当事者系再審査の中止を請求したが、米国特許庁は、特許の有効性に関して裁判所の判決がなかったとして、中止を認めなかった。特許権者は、米国特許庁を行政手続法に基づいて訴えた。地裁は、米国特許庁の決定を維持するサマリ・ジャジメントを下した。CAFCもサマリ・ジャジメントを維持した。
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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
