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The “Words Of Degree” Trilogy and More

by Orlando Lopez

The week of April 2nd brought three cases related to “words of degree” in the claims – one of those providing some insight also into obviousness, one case relating to when a claim of incorrect inventorship is a proper cause of action in the courts and one case relating to declaratory judgment.

The “words of degree” trilogy
While the three cases in the “words of degree” trilogy relate to very different technologies, the CAFC opinions have a great degree of commonality. Enzo Biochem et al.v. Applera et al. relates to patents for “labels” attached to DNA or RNA strands which allow detection of a “target” strand.  Power-One v. Artesyn Technologies relates to a patent, assigned to Power-One, for a power supply systems with multiple regulators.  Completing the trilogy, Hearing Components v. Shure relates to two patents directed to hearing aid ear pieces having a number of features including earphones with two different designs, straight and barbed nozzles.  Terms such as “substantially,” “about,” “near,” “adapted to” are referred to, in claim language, as “words of degree.” A common thread in all of the three decisions is the statement by the Court that even though reference to a precise numerical treatment is not given, if a person skilled in the art, when taking the term in the context of the specification, would understand the meaning of the term, the claim is not indefinite. This trilogy of opinions of this week that relate to “words of degree” provides some guidance, both in patent prosecution and patent litigation, as to how to indicate from the specification that the scope of the claim can be determined.

There are some other statements in the opinions, not related to “words of degree,” that are also of interest. In Power One, the Court stated, citing KSR, that merely finding one element of claim independently in one of the references, doing this for all the elements of the claim and combining all of those references is not sufficient to prove obviousness unless a plausible rationale as to why or the references work together is given. In Hearing Components, there is a discussion of the determination of equivalents for “means for” claims and a discussion of the defense of laches, both of which are of interest.

HIF-Bio et al. v. Yung Shin Pharmaceuticals Industrial Co., Ltd.
The question considered by the Federal Circuit was whether the remand of an inventorship and ownership cause of action was proper and whether a valid cause of action existed. The Federal Circuit found that the District Court could not remand to state court claims stating federal questions (arising under federal law) and held that the patent statute does not create “a private right of action to challenge inventorship of a pending patent application.” This holding makes it clear that challenging inventorship in a patent application can not be done in court but rather through the USPTO.

Innovative Therapies, Inc. v. Kinetic Concepts, Inc.
This case relates to the denial of a declaratory judgment action against Kinetic Concepts, Inc. although the Federal Circuit upheld the denial by the District Court based on procedural issues (that a plaintiff cannot rely on allegations in an amended complaint that happened after the original complaint was filed in order to show that a controversy existed when the original complaint was filed), it should be noted since the opinion indicates that there is some limits to the generalization of declaratory judgment that has occurred after MedImmune.

Off the center stage during the week of March 26, 2010
While Ariad v. Lilly took center stage during that week, there were several other decisions that, while in the side rings, are summarized below:

Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd
This decision relates to a patent for a device that allows the surgeon to introduce a catheter or leads for a pacemaker during surgery while preventing excessive blood flow, a very useful device. However, in terms of patents, the decision has consequences for “means for” claims, claims for a system written in functional form, in terms of the function of the component. By statute, such claims cover only the structures described in this specification and their equivalents. The Pressure Products reminds us that, as the court had preview held in Atmel, incorporation by reference of a patent cannot be used to describe a structure. References can be incorporated to describe what is in the prior art but not to describe what is new.

Marrin v. Griffin
In this opinion, the Federal Circuit affirms a judgment of non-infringement of a patent related to a scratch off label to mark beverage containers. In the opinion, the Federal Circuit Court restates, as stated in previous opinions, that the language in the preamble that describes the intended use of the system or apparatus is not a limitation of the claims and does not have to be compared to the product in an infringement analysis. The Court also provides a useful discussion of cases in which the preamble or part of the preamble can be included in the claim’s imitations.


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