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
Patent Infringement Litigation as a Double-Edged Sword: Invalidated Patents and Inequitable Conduct
| December 6, 2013
The Ohio Willow Wood Company (OWW) v. ALPS South LLC. (Alps)
Decided November 15, 2013
Before Dyk (Circuit Judge), Bryson (Circuit Judge) and Reyna (Circuit Judge). Opinion by Reyna.
Keywords: collateral estoppel, obviousness, inequitable conduct, reexamination, and rule of reason.
Summary:
OWW initiated a suit against Alps for patent infringement. After a long legal battle including two ex parte reexaminations, two District Court proceedings, and two CAFC appeals, OWW lost two patents and was charged with inequitable conduct.
Details:
OWW is the owner of US Patent No. 5,830,237 (the ‘237 patent), entitled “Gel and Cushioning Devices,” filed on March 5, 1996. The ‘237 patent disclosed cushioning devices designed to cover the residual stumps of amputated limbs, acting as a shape-conforming buffer, as illustrated below, to make the use of attached prostheses more comfortable. The primary invention was a cushion liner comprising a fabric covering in the shape of a tube sock coated on only one side with mineral oil-based polymeric gels.
On December 27, 2004, OWW filed its complaint against Alps for infringement of the ‘237 patent. After the District Court issued its Claim Construction order in the proceedings, Alps filed its first request for an ex parte reexamination of the ‘237 patent. The District Court stayed the litigation for the duration of reexamination proceedings, pending resolution of the validity of the disputed patent.
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Tags: Collateral Estoppel > inequitable conduct > obviousness > reexamination > Rule of Reason
Election of species in case where there is no generic claim amounts to a “restriction” for applying safe harbor provision of 35 U.S.C. §121
| September 18, 2013
St. Jude Medical, Inc. v. Access Closure, Inc.
September 11, 2013
Panel: Lourie, Plager and Wallach. Opinion by Plager. Concurring opinion by Lourie.
Summary:
St Jude Medical, Inc. asserts two sets of patents against Access Closure, Inc. (ACI). The patents claim methods and devices for sealing a “vascular puncture” into a vein or artery made during a medical procedure.
Claims 7, 8 and 9 of the Janzen patent are invalid for double patenting over the claims of a copending “sibling” application because claims 7, 8 and 9 are directed to an invention identified as Group II in a restriction requirement, further limited to species C, and the claims in the sibling patent are directed to a Group II invention but without any limitation to species. The safe harbor provision of 35 U.S.C. §121 does not apply because the claims of the Janzen patent are not patentably distinct from the claims of the sibling patent, and the patents do not maintain the “consonance” created by the original restriction requirement and requirement for election of species.
The claims of the two Fowler patents asserted by St Jude Medical are not obvious over a combination of two cited references because the references teach alternative methods (inserting a balloon or inserting a gelfoam stick) for achieving hemostasis, whereas the claims in the Fowler patents use a balloon for another purpose, i.e., to help position a plug and prevent it from entering a blood vessel.
Tags: double patenting > election of species > obviousness > restriction > safe harbor rule
Predictably Divided CAFC Panel Finds Computer System Claims Not Patent-Eligible
| September 17, 2013
Accenture Global Services, GMBH v. Guidewire Software, Inc. September 5, 2013 Panel: Lourie (author), Reyna, Rader (dissent) Summary:Not surprisingly, the decision of the latest Federal Circuit case on software patent eligibility can be predicted based on the makeup of the CAFC panel. Judge Lourie, joined by Judge Reyna, issued the majority opinion that the system claims were invalid. The Court followed the analysis for determining patent eligibility from CLS Bank, 717 F.3d 1269 (Fed. Cir. 2013) and affirmed the district court’s finding that the system claims of U.S. Patent No. 7,013,284 (“the ‘284 patent”) were ineligible. Judge Rader dissented.
Tags: §101 > abstract idea > CLS Bank > preemption > software patent
Inventorship disputes raise difficult issues; involvement of State universities adds layers of complexity
| September 6, 2013
University of Utah v. Max-Planck-Gesellschaft
August 19, 2013
Panel: Moore, Reyna and Wallach. Opinion by Reyna. Dissent by Moore.
Summary:
This case started with the University of Utah suing the University of Massachussetts and others to obtain correction of inventorship in a group of patents co-owned by UMass and the other defendants. But the main issues in this appeal relate to the status of the plaintiff UUtah and initial co-defendant UMass as State entities.
To overcome UMass’ sovereign immunity defense (a State can be sued by another State only in the Supreme Court under Article III of the Constitution), UUtah amended its complaint to name individual UMass officials, instead of UMass itself.
The District Court held that the lawsuit could proceed, and the Federal Circuit affirms on the grounds that (1) UMass is not a “real party of interest” because deciding inventorship does not involve a core state interest, and (2) UMass is not an “indispensable party” because the officials can adequately represent the interest of UMass as co-owner of the patents.
Tags: indispensable party > inventorship correction > sovereign immunity
Incorporation by reference by its entirety without further relevant citation to specific contents is insufficient to provide intrinsic record to trump the disclaimer in the specification
| September 4, 2013
SkinMedica, Inc. v. Histogen Inc. et al.
August 23, 2013
Panel: Rader, Clevenger, Prost. Opinion by Prost. Dissent by Rader.
Summary:
SkinMedica owns the ’494 patent. It filed a patent infringement suit against Histogen. During the prosecution, the inventors limited their claimed inventions to pharmaceutical compositions comprising cell culture medium conditioned by animal cells cultured in three-dimensions. The issue is whether the claimed term, “culturing … cells in three-dimensions,” covers the use of beads. The ordinary meaning of the claimed term, “culturing … cells in three-dimensions” would cover the use of beads. The court found that the inventors expressly defined the use of beads as culturing in two-dimensions. Also, the inventors avoided anticipatory prior art during prosecution by asserting that the conditioned medium produced by two-dimensional cultures was inferior and chemically distinct from the conditioned medium produced by three dimensional cultures. SkinMedica also argued that the ’494 specification incorporates Doyle by reference, which explains the use of beads. However, the court rejected this argument since specific reference to the relevant discussion is not made in the intrinsic record, which does not trump the disclaimer in the specification.
SkinMedica は494特許を所有しており、Histogen社を特許侵害で訴えた。494特許の審査段階において、出願人はクレーム発明を補正し、3次元培養に限定し た。争点は、クレーム発明がビーズの使用を含むかどうかである。クレーム用語である「細胞を3次元で培養する」の通常の意味は、ビーズの使用を含む。しか しながら、裁判所は、内部証拠から判断して、発明者が、ビーズの使用は2次元培養であることを明確に定義したと判断した。また、発明者は審査段階において 新規性拒絶をクリアするために2次元培養で製造した調整媒体は劣っており、3次元媒体で製造した調整媒体と化学的に区別できることを主張した、と判断し た。また、494特許は、ビーズの使用を説明した文献（Doyle）を明細書に引用していたが（incorporation by reference）、関連箇所を示す説明が何もないとして、SkinMedicaの主張を退けた。
Instruction from PTO on Software Composition Claims
| August 28, 2013
Ex parte Mewherter, 2012-007962 (PTAB, 2013)
The Patent Office rarely designates decisions of the Patent Trial and Appeal Board as being “precedential,” but when it does, practitioners take note. The Patent Office’s designation last week of Ex parte Mewherter, 2012-007692 as falling in that category will be of particular interest to those handling software patent applications.
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Disavowal of Claim Terms is a Stringent Hurdle to Overcome, which must be “Clear and Unmistakable” Disavowal to Limit the Scope of Claims
| August 14, 2013
Plantronics, Inc. v. Aliph, inc. and Aliphcom, Inc.
July 31, 2013
Panel: Rader, O’Malley and Wallach. Opinion by Wallach.
Summary
This is a patent infringement suit by Plantronics against Aliph. Plantronics is owner of US Patent 5,712,453 (‘453 patent) entitled, “Concha Headset Stabilizer.” This is a concha-type headset to anchor in a user’s ear for use in a telephone receiver.
The district court granted-in-part summary judgment for Aliph, for noninfringement and invalidity. After appeal, the Federal Circuit reversed-in-part, vacated in part and remanded for further proceedings. More specifically, the Federal Circuit reversed the summary judgment of noninfringement and invalidity. The discussion below will focus on the issue of noninfringement.
Tags: claim construction > drawings > prosecution history estoppel > restriction > species
Did the CAFC Extrapolate From the Teachings of the References to Reach the Conclusion of Obviousness?
| August 12, 2013
In re Adler
July 18, 2013
Panel: Prost, Reyna and Wallach. Opinion by Wallach
Summary
The Examiner rejected all of the pending claims under 35 U.S.C. §103 as obvious over several prior art references, including International Patent Publication WO 00/22975 (“Meron”) in view of Masaru Hirata et al., Study of New Prognostic Factors of Esophageal Variceal Rupture By Use of Image Processing With a Video Endoscope, 116 Surgery 8–16 (1994) (“Hirata”).
The Board of Patent Appeals and Interferences (“the Board”) affirmed the Examiner’s rejection of all pending claims of U.S. Patent Application No. 10/097,096 (the ‘096 application) under 35 U.S.C. §103 as being obvious over a combination of prior art references. Adler appealed the Board’s decision to the Court of Appeals for the Federal Circuit (CAFC). The CAFC affirms holding that the Board did not err in rejecting the pending claims as obvious and did not rely on new grounds for rejection.
Amending to exclude a species via a negative limitation may violate the written description requirement
| August 7, 2013
In re Bimeda Research & Development Limited
July 25, 2013
Panel: Rader, Clevenger, Prost. Opinion by Clevenger. Concurrence by Rader.
Summary:
The court held a negative limitation to exclude a genus does not provide 112, first paragraph written description support to claim a negative limitation that excludes a species, which species was never mentioned in the application.
Tags: genus > negative limitation > species > written description
