CAFC provides guidance on Nautilus indefiniteness standard
| September 18, 2014
Interval Licensing LLC v. AOL, Inc. (Precedential)
September 10, 2014
Panel: Taranto and Chen. Opinion by Chen.
Summary:
The Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc. (2014) rejected the Federal Circuit’s “insolubly ambiguous” test for indefiniteness, holding that the claim language must be capable of interpretation with “reasonable certainty” to avoid indefiniteness under 35 U.S.C. 112, second paragraph (now AIA 35 U.S.C. 112(b)).
Citing to Nautilus, but weaving in its own pre-Nautilus case law, a Federal Circuit panel affirms the District Court’s pre-Nautilus holding that claims reciting the expression “in an unobtrusive manner” are invalid for indefiniteness. Notably, the Appeals Court refuses to narrow the expression to an example of the patents’ description, in the absence of an indication in the description that the expression is defined by this example.
EPOS Technologies v. Pegasus Technologies
| September 10, 2014
September 5, 2014
Panel: Hughes and Bryson. Opinion by Hughes.
Discussion:
The Doctrine of Equivalents is applicable in cases where the accused product or process does not literally meet one or more of the limitations of the patent-in-suit. Essentially, a court asks whether the accused product or process possesses a feature(s) which is the equivalent of the limitation(s) not literally met.
Tags: Infringement under the Doctrine of Equivalents > the Binary Limitation of the Doctrine
Jurisdiction for Appeal
| September 4, 2014
Arlington Industries, Inc. v. Bridgeport Fittings, Inc.
July 17, 2014
Panel: Chen, Clevenger and Hughes. Opinion by Hughes.
Summary
Arlington Industries, Inc. is the owner of U. S. Patent No. 6,335,488. The ‘488 patent is directed to a method for connecting electrical cables to a junction box using electrical fittings. Arlington and Bridgeport Fittings, Inc. compete in the same industry.
Arlington sued Bridgeport in 2004 for patent infringement of the ‘488 patent. As a result, the two parties entered a settlement agreement in which Bridgeport agreed to be enjoined from making, using, or selling certain products or their “colorable imitations”.
Bridgeport redesigned its connectors in 2005 to have a frustoconical leading edge. The redesigned connectors were sold by Bridgeport as the following models: 38ASP and 38OSP.
In 2012 Arlington sought a contempt order holding that Bridgeport’s redesigned connectors violated the original agreement and the court’s order. The district court held Bridgeport in contempt in 2013, because it found the redesigned connectors were not more than “colorable imitations” of the original connectors. Furthermore, the district court also found that the redesigned connectors of Bridgeport met claim 1 of the ‘488 patent by clear and convincing evidence.
Bridgeport appealed the contempt order of the district court and the determination that the redesigned connectors were not more than “colorable limitations” of Bridgeport’s original connectors.
When Legitimate Advocacy Crosses the Line to Inequitable Conduct
| August 27, 2014
Apotex Inc. and Apotex Corp. v. UCB, Inc., and Kremers Urban Pharmaceuticals, Inc., andSchwarz Pharma, Inc., Paddock Laboratories, LLLC, andPerrigo Company
August 15, 2014
Panel: Reyna, Wallach, and Hughes. Opinion by Reyna.
There is a line separating strong advocacy for your patent application and violating your duty of candor before the U.S. Patent & Trademark Office. This precedential decision illustrates when the line is crossed to result in a finding of inequitable conduct, leading to a patent becoming unenforceable.
Written Description
| August 20, 2014
ScriptPro, LLC v. Innovation Associates, Inc.
August 6, 2014
Panel: Taranto, Bryson and Hughes. Opinion by Taranto
Summary:
ScriptPro sued Innovation Associates, Inc, alleging infringement of claims 1, 2, 4, and 8 of U.S. Patent No. 6,910,601. Innovation Associates counterclaimed on various grounds, including invalidity under 35 U.S.C. § 112.
Shortly after suit filed, Innovation Associates initiated an inter partes reexamination of the ’601 patent at the PTO, and the district court stayed proceedings in this case to await the PTO’s determination.
The PTO completed its reexamination of the ’601 patent. It confirmed amended claims 1 and 2 (amended in ways not relevant to this appeal). It confirmed claim 4, formerly a dependent claim, as rewritten to be an independent claim, but not otherwise amended. And it confirmed claim 8 without amendment. The amendments are not relevant to the issues on appeal.
Proceedings in the infringement suit resumed.
The district court granted summary judgment for Innovation Associates, holding that the asserted claims were invalid under 35 U.S.C. § 112.
The district court rested its holding on a single conclusion—that the specification describes a machine containing “sensors,” whereas the claims at issue do not claim a machine having “sensors.”
ScriptPro appealed.
The district court granted summary judgment of invalidity on the ground that the patent’s specification does not describe the subject matter of the asserted claims, which do not require sensors. This is the only issue on appeal.
The district court agreed with Innovation Associates that the specification indisputably limits the invention to a collating unit that uses sensors to determine whether a particular holding area is full when selecting a holding area for storage of a prescription container.
The district court concluded “no reasonable jury could find that the inventors were in possession of a collating unit that operated without sensors.”
The district court decision is reversed.
Tags: abstract > claims as originally filed > specification > written description
In the wake of Alice Corp. v. CLS Bank Int’l, the Federal Circuit strikes down another patentee’s claims for reciting patent ineligible abstract idea
| August 18, 2014
Digitech Image Technologies v. Electronics For Imaging, Inc.
July 11, 2014
Panel: Moore, Reyna, Hughes. Opinion by Reyna.
Summary
Digitech is the assignee of U.S. Patent No. 6,128,415 (the ‘415 patent) directed to a device profile for a digital image reproduction system and a method of generating a device profile in a digital image reproduction system. Digitech sued 32 defendants for infringement in the U.S. District Court for the Central District of California. Several defendants filed summary judgment motions seeking to invalidate the asserted claims of the ‘415 patent under 35 U.S.C. §101. The district court granted the defendants’ motions and found all of the asserted claims to be subject matter ineligible. On appeal, the Court of Appeals for the Federal Circuit (CAFC) affirmed.
Somewhat unexpected results yield to strong evidence of obviousness to try
| August 8, 2014
Roche and Genentech v. Apotex Inc; Roche and Genentech v. Dr. Reddy’s laboratories; Roche and Genentech v. Watson etc.; Roche and Genentech v. Orchid chemicals & pharmaceuticals etc; and Genentech v. Mylan etc.
April 11, 2014
Before Newman, Lourie, and Bryson. Opinion by Bryson. Dissent by Newman
Summary
Plaintiff Roche appeals from the decision of the U.S. District Court for the District of New Jersey granting the defendant generic drug companies summary judgment of invalidity of Roche’s two patents related to Boniva®, a commercial drug for the treatment of osteoporosis. CAFC affirms.
Prima facie case of obviousness is not established solely because end point of claimed range is close to disclosed range
| July 31, 2014
In re Rajen M. Patel
July 16, 2014
Panel: O’Malley and Hughes. Opinion by O’Malley.
Summary
PTAB affirmed Examiner’s rejections of Applicants’ claims reciting a range limitation of weight percent of a polymer component, as being obvious over a cited reference because it discloses a range whose upper limit is very close to the claimed lower limit. Applicants appealed from the PTO decision and argued before CAFC that the PTAB erred in finding a prima facie case of obviousness where the amounts do not overlap. CAFC agreed with the Applicants and distinguished this case from its previous cases where range overlapping at least to some degree was required to find obviousness.
出願クレームは、ポリマーの量（26 wt%以上）を記載し、先行技術はポリマーの量（25 wt%以下）を開示していた。その差は僅か1％ほどである。米国特許庁審査官はこの場合、数値は重複していないが、非常に近接しているので、それだけで自明性の存在が一応証明され（prima facie case of obviousness）、したがって、出願人が非自明性（たとえば予期せぬ効果）を証明しなければ特許されないと判断した。同特許庁審判部はこの結論を維持した。この決定を不服として出願人はCAFCに上訴し、クレームの数値範囲に「近い」という理由だけで即座に自明であるとした特許庁の判断は間違いであると主張した。CAFCは出願人の意見に同意し、特許庁の判断を覆した。本件は、先行技術の数値がクレームの数値と重複しておらず、クレームの数値へ増量するという教示が先行技術にはないことに着目し、単に数値が「近い」というだけで自明であるとしてはいけないとの判断である。特許庁のガイドラインは、数値範囲が重複していなくても、同様の特性が予期できる程度に「近い」といえる場合は一応の自明性があると説明しているが、本件はこの基準の適用範囲を制限した判決であると考えられる。
Post-filing recognition of a drug compound’s unexpected property may not be sufficient to establish the compound’s nonobviousness.
| July 24, 2014
Bristol-Myers Squibb Company v. Teva Pharmaceuticals USA, Inc.
June 12, 2014
Summary
The Federal Circuit found that a patent claim directed to a drug compound for treating hepatitis B was invalid as an obvious modification to a structurally similar lead compound. In so finding, the Federal Circuit dismissed evidence of later discovery, after the time of invention, that the lead compound was highly toxic and therapeutically useless. The Federal Circuit then determined that evidence of the drug compound’s later-discovered unexpected lack of toxicity was insufficient to prove nonobviousness, despite additional evidence demonstrating the drug compound’s unexpectedly high potency and unexpectedly high barrier to resistance. The Federal Circuit’s decision may have taken some bite out of the court’s precedents that an invention’s properties and advantagesneed not be fully known as of the filing date of the patent application to be relevant to nonobviousness.
Not All Secondary Considerations are Probative of Nonobviousness
| July 23, 2014
Galderma Labs v. Tolmar, Inc.
December 11, 2013
Before NEWMAN, BRYSON, and PROST, Circuit Judges. Opinion for the court filed by Circuit Judge PROST. Dissenting opinion filed by Circuit Judge NEWMAN.
SUMMARY
This Hatch-Waxman case is based on Tolmar’s filing of an Abbreviated New Drug Application (“ANDA”) seeking approval to market a generic drug (Differin® Gel,0.3%), which is a topical medication containing 0.3% by weight adapalene approved for the treatment of acne.
Tags: commercial success > secondary considerations > teaching away > unexpected results
