Burden of persuasion in the post-MedImmune world
| September 27, 2012
Medtronic v. Boston Scientific Corporation, Guidant Corporation and Mirowski Family Ventures
September 18, 2012
Panel: Lourie, Linn, Prost. Opinion by Linn.
Summary
This decision discusses who carries the burden of persuasion in the post-MedImmune world. This question arises as a consequence of the Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). In MedImmune, the Supreme Court found declaratory judgment jurisdiction even though the declaratory judgment plaintiff-licensee continued to make royalty payments pursuant to a license. The Court reasoned that a licensee should not be forced to cease royalty payments and risk infringement liability before the licensee can challenge the extent of coverage of the license.
The district court entered judgment of non-infringement in favor of Medtronic and judgment of validity and enforceability in favor of Mirowski Family Ventures (MFV). MFV appeals the judgment of non-infringement and Medtronic cross appeals the district court’s claim construction. The CAFC vacates the district court ruling and remands.
Tags: burden of persuasion > claim construction > Declaratory judgment > license
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
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
