Once again, the plain meaning controls.
| May 9, 2014
GE Lighting Solutions, LLC v. AgiLight, Inc.
May 2, 2014
Panel: Rader (Chief Judge), Moore (Author), and Reyna
Appeal from U.S. District Court for the Northern District of Ohio.
Summary
GE Lighting Solutions, LLC (GE) appealed the district court’s grant of summary judgment that AgiLight, Inc.’s (AgiLight) accused products and processes do not infringe asserted claims of GE’s U.S. Patent Nos. 7,160,140, 7,520,771, 7,832,896, and 7,633,055. The issues mostly involved claim construction. After resolving the claim construction issues, the CAFC reversed and remanded the grant of summary judgment with regard to the ’140, ’771 and ’896 patents and affirmed the grant of summary judgment with regard to the ’055 patent.
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Reexamined patent claims are assumed to be subset of original patent claims unless proven otherwise, for application of res judicata (claim preclusion).
| April 24, 2014
Senju Pharmaceutical Co., Ltd., Kyorin Pharmaceutical Co., Ltd., and Allergan, Inc. v. Apotex Inc. and Apotex Corp.
March 31, 2014
Panel: Newman, Plager (author) and O’Malley (dissent).
Background: Appeal from U.S. District Court for the District of Delaware.
Senju Pharmaceutical Co., Ltd. and Kyorin Pharmaceutical Co., Ltd. (collectively referred to as “Senju”) jointly own U.S. Patent No. 6,333,045 for aqueous pharmaceutical formulations of the antibiotic Gatifloxacin. Allergan is the exclusive licensee under this patent for ophthalmic uses, and produces under license eye drops for treating the “pink eye” infection. The eye drop formulation contains disodium edetate (EDTA) which improves passage of the antibiotic through the cornea of the eye.
Apotex Inc. is a Canadian generic drug manufacturer which plans to formulate an ophthalmic solution containing the antibiotic, to be marketed by Apotex Corp. which is based in the U.S. Following the procedure enacted under the Hatch-Waxman Act, Apotex (referring collectively to Apotex, Inc. and Apotex, Corp.) filed with the FDA in July 2007 an Abbreviated New Drug Application (ANDA) for a generic version of the ophthalmic drug containing the antibiotic. Also under this procedure, Apotex filed a patent certification with the FDA and notified Senju about the certification. [This notice is required when the ANDA applicant certifies that a patent named in the New Drug Application (NDA) for the original drug is “invalid, unenforceable, or will not be infringed by the manufacture, use, or sale” of the generic drug. After receiving the notice, the NDA holder may sue the ANDA applicant for patent infringement under the provisions of 35 USC §271(e)(2)(A).] As would be expected, Senju filed suit against Apotex, alleging infringement of claims 1-3 and 6-9 of the patent.
Reexamination Bites Another Patent Owner
| April 16, 2014
In Re Teles AG Informationstechnologien and Sigram Schindler Beteiligungsgesellschaft MBH
Decided April 4, 2014,
Before Dyk, Moore, and Wallach. Opinion by Dyk
Summary:
This precedential decision illustrates a number of strategies that a patent owner may need to consider when an unfavorable decision is rendered by the Board of Patent Appeals and Interferences (now Patent Trial and Appeal Board) during a reexamination proceeding. Although an appeal to the Federal Circuit is most commonly pursued by a patent applicant, why would a patent owner consider an appeal to the U.S. District Court for the District of Columbia? In addition, this decision illustrates that while a broad claim construction may be desirable to ensnare infringers, a broad claim construction can also come back to bite the patent owner in a way to render claims invalid over the prior art.
The Court Gives Roadmap to Patent Trolls on How to Obtain Lucrative Settlements from Customers without Declaratory Judgment Recourse from Manufacturers.
| April 11, 2014
Microsoft v. DataTern, Inc. and SAP v. DataTern, Inc. (Precedential Opinion).
April 4, 2014
Before Chief Judge Rader, Prost and Moore. Opinion by Moore. Opinion dissenting-in-part by Rader.
Summary
DataTern, Inc., a company established to exploit IP opportunities (aka patent troll), sued hundreds of customers of Microsoft and SAP alleging infringement of its’ patents for a software product that facilitates interfacing of object-oriented applications with relational databases, seeking lucrative settlements from consumers disinterested in combating a full patent lawsuit without suing Microsoft and SAP. Despite DataTern’s effort to avoid litigation with Microsoft and SAP, who as manufacturers of the products were well equipped and interested to seek legal recourse, Microsoft and SAP successfully filed declaratory judgment actions in New York district court and were awarded summary judgments for non-infringement. DataTern appealed to the CAFC. Although the CAFC affirmed the district court’s decision, as explained in the dissenting-in-part opinion of Chief Judge Rader, the CAFC’s opinion “creates a roadmap [for patent troll’s] to avoid declaratory judgment” actions by taking steps to ensure that their claim charts presented to allegedly infringing customers reference only customer activity and not activity of the product manufacturers.
Tags: claim charts > claim construction > contributory infringement > Declaratory judgment > inducement > subject matter jurisdiction
The term “receiver” connotes sufficiently definite structure to avoid interpretation under §112, sixth paragraph
| February 7, 2014
EnOcean Gmbh v. Face International Corporation
Decided January 31, 2014
Before Radar, Lourie and Prost. Opinion by Prost
Summary
Face’s patent (USP 7,084,529) issued in 2006, having claims directed to a self-powered switch. EnOcean owns the rights to U.S. Patent Application No. 10/304,121, also having claims directed to a self-powered switch. The EnOcean ‘121 application claims priority back to a German application filed on May 24, 2000. Face’s priority only goes back to 2001. After Face’s patent issued, EnOcean amended the claims in the ‘121 application to match those of the ‘529 patent, and requested an interference.
In the interference proceeding, EnOcean identified a set of prior art references, including published PCT Application No. PCT/GB01/00901 to Burrow, that invalidated the Face’s ‘529 patent as obvious. However, the prior art date of the Burrow reference is March 5, 2001, which is an intervening date between the US filing date of EnOcean’s application (November 25, 2002) and the filing date of the German priority application (May 24, 2000).
The Board of Patent Appeals and Interferences (“Board”) treated the amended claims in EnOcean’s application reciting a “receiver” as means-plus-function claims, and, as such, found that these claims were not supported by the German priority application because the priority document did not describe the structure corresponding to the “receiver”. The Board found that these claims were not entitled to the earlier priority date of the German application, and that these claims were invalid as obvious over the same combination of prior art that invalidated Face’s patent.
EnOcean appealed. The CAFC held that the Board erred in treating certain of EnOcean’s claims as means-plus-function claims.
In case of first impression, the CAFC determines that the principles of prosecution history estoppel apply to design patents.
| January 31, 2014
Pacific Coast Marine v. Malibu Boats, LLC
Decided January 8, 2014
Before Dyk, Mayer, and Chen. Opinion by Dyk.
Summary
Bach’s original design patent application included multiple embodiments of a marine windshield. The Examiner issued a restriction requirement, in response to which Bach elected the first embodiment, canceled the other four, and filed a divisional for the third embodiment only. After the patent issued, Bach assigned it to Pacific Coast, which sued Malibu Boats for infringement. The Malibu Boats windshield differed slightly from the patented embodiment, as well as the non-elected embodiments. The district court granted Malibu Boats’ motion for partial summary judgment of non-infringement on the grounds of prosecution history estoppel, finding that “that, during prosecution, the applicant had surrendered the designs reflected in the canceled figures and amended the claim ‘in order to obtain the patent.’” The CAFC reversed, holding that although “there was a surrender of claim scope during prosecution,” the accused design was not “within the scope of the surrender.”
Weak Prima Facie Case Obviousness vs. Strong Evidence of Non-Obviousness
| January 22, 2014
Institute Pasteur v. Focarino (Fed. Cir. 2013)
(2012-1486)
Decided December 30, 2013
Before NEWMAN, CLEVENGER, and TARANTO, Circuit Judges. TARANTO, Circuit Judge.
Key Words: non-obviousness, biotechnology, enzyme, reasonable expectation of success
Summary:
Institute Pasteur (Pasteur) owned patents claiming inventions related to a group of enzymes, i.e., Group I intron-encoded (GIIE) endonucleases. The enzymes are useful as laboratory tools to cut a DNA sequence at a particular site of the sequence in vitro or in situ. In reexamination of the patents, the Board of Appeals rejected the claims as being obvious over cited references. Pasteur appealed to the CAFC. The CAFC vacated the Board decision and remanded for consideration of what would constitute motivation for one skilled in the art to pursue the claimed invention because the Board misread the teachings in prior art and failed to weigh properly substantive evidence of non-obviousness.
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Federal Circuit Restricts ITC Remedies for Induced Infringement
| January 14, 2014
Suprema and Mentalix v Int’l Trade Comm’n – CAFC Opinion
Decided December 13, 2013
Prost; O’Malley; Reyna. Opinion by O’Malley; Dissent by Reyna.
Summary:
The CAFC found that the ITC cannot issue an exclusion order based solely on induced infringement under circumstances in which the underlying direct infringement of an asserted method patent necessarily does not take place until after importation of the contested article. Where direct infringement does not exist or occur before or during importation, the ITC does not have the authority to remedy acts of induced infringement alone, under such circumstances where direct infringement of the claimed method of the asserted patent occurs post-importation: the imported goods are not, in and of themselves, infringing articles before or while they are being imported into the U.S. While the Court’s majority emphasizes the circumstance-specific implications of its decision, the dissenting opinion by Circuit Judge Reyna raises concern that the distinctions articulated by the Court would, in effect, overturn decades of practice by the ITC conducting Section 337 investigations into respondents who actively induce post-importation infringement by their products, and similarly allow for infringers to circumvent ITC authority, accordingly.
EXAMINER’S NEW MOTIVATION TO COMBINE REFERENCES MAY CONSTITUTE “NEW GROUND OF REJECTION,” PREVENTING FINALITY OF THE REJECTION
| December 18, 2013
in re Lutz Biedermann – CAFC Opinion
Decided October 18, 2013
Panel: Linn (Opinion author), Moore and O’Malley
Summary
While the Examiner’s motivation to combine prior art references in his rejection was the efficiency of a square thread, the principal reason the Board affirmed the combination of these references was the use of square threads to avoid splaying. The Federal Circuit held that these are different grounds of rejection, and form the bases or underpinnings of different rejections. Therefore, the Federal Circuit found that because the Board made new findings and adopted different reasons to support a new ground of rejection, it had improperly deprived the applicant of both notice and an opportunity to respond.
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Tags: Due process > Motivation > New Ground of Rejection > Notice and Opportunity to Respond > obviousness
Permanent Injunctions: the Federal Circuit’s Causal Nexus Swing
| December 11, 2013
Apple, Inc. v. Samsung Electronics – CAFC Opinion
Decided November 18, 2013
Panel: Judges Prost, Bryson and O’Malley, Opinion by Judge Prost
Summary
The Federal Circuit vacated the California District Court’s denial of permanent injunctive relief against Samsung for its infringement of Apple, Inc.’s smart phone utility patents on the basis of the District Court having abused its discretion by failing to properly analyze evidence of causal nexus pertaining to irreparable harm and the inadequacy of legal remedies. This case is the third appeal to the Federal Circuit in this matter between Apple and Samsung. In 2011, in Apple’s initial infringement suit against Samsung, the jury found that twenty-six (26) Samsung smart phones infringed on six (6) Apple patents, and awarded Apple more than $1 billion in damages. Prior appeals to the Federal Circuit involved appeals related to preliminary injunctive relief (Apple I and II). While the Federal Circuit in prior appeal (Apple II) had rejected the District Court’s award of a preliminary injunction for not having considered the causal nexus requirement, the Federal Circuit now vacates the District Court’s award of permanent injunctive relief for having placed too much emphasis on the causal nexus requirement.
Details
Background:
Upon obtaining the District Court decision, Apple moved for a permanent injunction to enjoin Samsung from importing or selling any of its twenty-six (26) infringing products or any other product not more than colorably different. Apple’s appeal is based on infringement of Apple’s 1) utility patents, 2) design patents and 3) trade dress. On December 12, 2012, the District Court denied the request for a permanent injunction. Here, the Federal Circuit affirmed the denial of permanent injunction for infringement of the design patents and trade dress, but vacated and remanded the denial of permanent injunction for infringement of the utility patents.
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Tags: Causal Nexus > injunction > irreparable harm > permanent injunction
