CAFC pointers on proving lack of “substantial non-infringing uses” in pleading contributory infringement
| June 20, 2012
Toshiba Corporation v. Imation Corp.
Jun 11, 2012
Panel: Dyk, Schall, and Moore. Opinion by Moore. Dissent by Dyk.
Summary:
(1) Grant of summary judgment of non-infringement as to contributory infringement of ‘751 patent affirmed because plaintiff did not meet burden of proof that there was a lack of substantial non-infringing uses.
(2) Grant of summary judgment of non-infringement as to induced infringement of ‘751 patent vacated because district court erred as a matter of law in holding that the existence of a substantial non-infringing use precludes a finding of induced infringement.
(3) Grant of summary judgment of non-infringement of ‘966 patent vacated because it was based on erroneous claim construction.
(4) No clear “take away” on claim construction from discourse between majority and dissent.
Tags: claims construction > contributory infringement > induced infringement > infringement > substantial non-infringing use
Recapture Issues in a Reissue Application
| May 30, 2012
In Re Roger Youman and Marney Morris
May 8, 2012
Panel: Lourie, Schall and Prost. Opinion by Prost. Dissent by Lourie.
Summary:
Applicants filed a broadening reissue application within two years of the patent issuing. The examiner rejected the claims because applicants attempted to recapture surrendered subject matter. The Board of Patent Appeals and Interferences (BPAI) affirmed the examiner’s rejection but the Court of Appeals for the Federal Circuit (CAFC) overturned the BPAI ruling and in doing so, clarified the three step process to determine if applicant is barred by the recapture rule.
Tags: §251 > Broadening > broadening reissue > Error Without Deceptive Intent > Intentional Surrender > Narrowing > recapture > reissue > Reissue Claim
Means-Plus-Function: The Achilles’ Heel
| May 9, 2012
Noah Systems, Inc. v. Intuit, Inc.
April 9, 2012
Panel: Rader, O’Malley and Reyna. Opinion by Judge O’Malley
Summary
This decision illustrates that a patent could become invalidated even after surviving challenges of reexamination, which strengthen the presumption of validity, when a challenger discovers the Achilles’ Heel of a means-plus-function claim element resulting in a summary judgment of invalidity by the CAFC. Noah appeals the granting, by the United States District Court for the Western District of Pennsylvania (DC), of Intuit’s Motion for Summary Judgment of Invalidity of USP 5,875,435 (the ‘435 patent) based on indefiniteness for a means-plus-function claim element without the DC hearing evidence of how one of skill in the art would view the specification. The CAFC affirms by finding that the specification discloses no algorithm when the specification discloses an algorithm that only accomplishes one of two identifiable functions performed by the means-plus-function limitation.
Tags: accounting > algorithm > expert testimony > financial > indefiniteness > invalidity > means-plus-function > software > summary judgment > ThomasBrown
Revisiting Therasense, CAFC finds that an inventor’s subjective belief that submission of documents was unnecessary may not be sufficient to avoid a showing of intent to deceive
| April 18, 2012
Therasense判決に基づくCAFC判決；書類のIDS提出は必要ではないとする発明者の主観だけでは欺瞞の意図の立証を避けるのには十分ではないかもしれない。
Aventis Pharma S.A. and Sanofi-Aventis U.S. LLC v. Hospira Inc. and Apotex Inc.
April 9, 2012
Panel: Linn, Dyk, and Prost; Opinion by Prost
Summary:
The court found that the patents were invalid over withheld references, and unenforceable for inequitable conduct.
If the patentee did not narrow the ordinary meaning of a claim term by either acting as its own lexicographer or disclaiming claim scope either in the specification or during prosecution, that claim term cannot be interpreted more narrowly than its ordinary meaning.
If the claims at issue are found invalid over a withheld reference under the clear and convincing evidence standard, then the withheld reference is found but-for material under the preponderance of evidence in Therasense; in this case, the materiality requirement was met since the patents were invalid based on the withheld references.
The witness’ explanation that that he believed he did not need to disclose the references to the PTO may not be sufficient to show that there was no specific intent to deceive the PTO because that finding was not the single most reasonable inference that could be drawn, unless the testimony is credible and the evidence presented is supported. The reference disclosing the information that shaped the inventive thinking should be cited, and there is no justification for telling the PTO about the prior art disclosing the problem an inventor examined while concealing key prior art disclosing the solution he chose.
Tags: claim construction > inequitable conduct > intent to deceive > materiality
Computer-implemented “control means” requires description of step-by-step algorithm even if not key feature of claimed invention
| April 4, 2012
Ergo Licensing, LLC v. Carefusion 303, Inc.
March 26, 2012
Panel: Newman, Linn and Moore. Opinion by Moore. Dissent by Newman.
Summary
Another reminder that under US patent law, a “means-plus-function” element recited in a patent claim covers only the corresponding structures described in the specification and their equivalents. If insufficient or no corresponding structures are described in the specification, the claim is invalid as indefinite. The rule is strictly applied even if the functional element is only a peripheral aspect of the invention. Here, the patent claims were directed to a multichannel drug infusion system. A “control means” was recited (for controlling the motor that adjusts the drug dosage). The Federal Circuit affirms the invalidity of the claims. The specification disclosed a “control device,” but no “step-by-step process.” Since the recited function could not be performed by a general computer without special programming, disclosure of an algorithm was required to avoid “pure functional claiming.”
Tags: algorithm > computer > indefiniteness > means-plus-function
The threshold to acquiring intervening rights by reexamination requires new or amended claim language
| March 21, 2012
Marine Polymer Technologies, Inc. v Hemcon, Inc. (en banc)
March 15, 2012
Panel: Rader, Newman, Lourie, Bryson, Gajarsa, Linn, Dyk, Prost, Reyna and Wallach (en banc)
Opinion for the court by Lourie. Rader, Newman, Bryson and Prost join in full and Linn joins in part II (Intervening Rights)
Opinion for the dissent by Dyk. Gajarsa, Reyna, and Wallach join in full and Linn joins in parts I-II (Claim construction, dismissing HemCon motion for JMOL and/or new trial)
Summary:
Based on statutory interpretation of 35 U.S.C. §307(b), the Majority held that the threshold requirement for acquiring intervening rights is that there must be amended or new claims that did not exist in the original patent but have been found to be patentable during reexamination. The CAFC held that amended means to make formal changes to the actual language of a claim. A claim is not amended merely because the scope of the claim has been altered by arguments presented during reexamination.
Tags: claim construction > damages > en banc > intervening rights > re-examination > reexamination
The Patent Court revisits IPXL doctrine regarding prohibition on hybrid claiming
| February 29, 2012
HTC Corporation v. IPCom GmbH & Co.
January 30, 2012
Panel: Bryson, Linn and O’Malley. Opinion by O’Malley.
Summary
HTC Corporation and HTC America, Inc. sued IPCom GmbH & Co., KG seeking a declaration that it did not infringe claims of IPCom patents. IPCom counterclaimed alleging infringement. HTC moved for summary judgment of invalidity on the ground that claims 1 and 18 of U.S. Patent No. 6,879,830 owned by IPCom were indefinite because (1) they claimed both an apparatus and method steps; and (2) the means-plus-function limitation “arrangement for reactivating,” found in the last paragraph of claims 1 and 18, was indefinite because the patent failed to disclose structure corresponding to the claimed function. On summary judgment, the district court agreed with HTC that claims 1 and 18 were indefinite based on the Federal Circuit’s precedent in IPXL Holdings, L.L.C. v. Amazon.com, Inc prohibiting hybrid claiming of apparatus and method steps in the same claim, but rejected HTC’s argument that the claims were indefinite for failing to disclose the structure corresponding to the means-plus-function limitation. On appeal, the Federal Circuit reversed the district court’s judgment of invalidity based on hybrid claiming, but did not disturb the district court’s finding regarding the means-plus-function limitation. The Federal Circuit held that the district court misconstrued the asserted claims and that the patent did not describe any improper hybrid claiming of apparatus and method steps in the same claim because the claims, when properly construed, were drawn to only an apparatus and the prohibition on hybrid claiming under IPXL was inapplicable to claims 1 and 18.
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Tags: claim construction > hybrid claiming > indefiniteness > means-plus-function > preamble-within-a-preamble
CAFC reviews and applies the doctrine of claim construction
| February 11, 2012
Thorner v. Sony
February 1, 2012
Panel: Rader, Moore, Aiken. Opinion by Moore.
Summary
The CAFC reverses a determination by the district court that there was no infringement because a limitation was improperly imported into the claim. Because the district court improperly limited the term “attached to said pad” to mean attachment only to an external surface and erred in its construction of the term “flexible”, the CAFC vacated and remanded.
Tags: claim construction > disavowal > lexicographer > ordinary and customary meaning
Joint Inventorship of a novel compound may exist even if co-inventor only developed method of making
| January 25, 2012
Falana v. Kent State University and Alexander J. Seed
January 23, 2012
Panel: Linn, Prost and Reyna. Opinion by Linn.
Summary
The CAFC held that a putative inventor who envisioned the structure of a novel chemical compound and contributed to the method of making that compound is a joint inventor of a claim covering that compound. One may be a joint inventor even if co-inventor’s contribution to conception is merely a method of making the claimed product and said co-inventor does not synthesize the claimed compound.
Tags: claim construction > damages > exceptional case > inventorship > joint inventorship
More on Typhoon: Knowledge in the Art as a Factor in Determining Sufficiency of Corresponding Algorithm
| January 4, 2012
Since the CAFC was relatively quiet last week due to the holidays, this week we revisit Typhoon, which we discussed in our post last week. In the second half of this case, the CAFC continued their review of the district court’s claim interpretation. The CAFC reviewed the MPF claim term “means for cross-referencing responses to said inquiries with possible responses from one of said libraries.” The CAFC chose to emphasize a 1985 case, Shatterproof Glass, in indicating that the amount of detail required in the specification is related to the existing knowledge in the field of endeavor.
