In Duramed Pharmaceuticals Inc. v. Paddock Laboratories Inc., Duramed owns a patent for a formulation for estrogen that includes a moisture barrier coating, where the formulation is used in hormone replacement therapy.  During prosecution of the application, responding to a rejection, Duramed amended claim 1 to recite a specific moisture barrier coating and the application was allowed.  Subsequently, Duramed filed suit against Paddock, alleging infringement of the patent for the estrogen formulation.  The suit was based on Paddock’s Abbreviated New Drug Application (ANDA) for a generic version of a hormone replacement therapy product utilizing a moisture barrier coating which was different from the specific one recited in Duramed’s claim 1.  The District Court granted Paddock’s motion for summary judgment of non-infringement, holding that Duramed’s amendment to claim 1 estopped Duramed from claiming infringement based on the doctrine of equivalents.  Duramed appealed to the CAFC, which upheld the judgment of the District Court.  Duramed’s argument on appeal was based on the fact that the equivalent moisture barrier coating used by Paddock was not foreseeable at the time the amendment was entered.  The issue was whether, in order to be foreseeable, the barrier coating used by Paddock had to be known, at the time when Duramed made the amendment, as a barrier coating for use with estrogens rather than as a barrier coating for use in the field of pharmaceutical compositions.  The CAFC held that foreseeability does not require that degree of precision in the knowledge of how to apply the known characteristic. The decision continues to clarify the effects of the Supreme Court decision in Festo.

In the opinion, In re Lovin, Lovin appealed the decision of the BPAI that upheld the examiner’s rejection of Lovin’s and others’ patent application, due to obviousness.  Lovin had filed a patent application for method and system for friction welding.  The examiner had rejected the claims in the application due to obviousness.  During prosecution, Lovin had argued the patentability of the independent claims and did not provide separate argument for the dependent claims.  Lovin appealed the rejection to the BPAI, which upheld the examiner’s rejection.  Lovin appealed to the CAFC.  The CAFC upheld BPAI’s decision.  A principal issue in the appeal was whether Lovin, in the appeal brief, had provided arguments for the separate patentability of the dependent claims.  The CAFC opinion, which delved into the deference given to an agency’s interpretation of its regulations and the effect of prior court decisions on that deference, accepted the BPAI’s interpretation of 37 CFR 41.37, which states that a statement, in an appeal brief, that merely points out what a claim recites, will not be considered an argument for patentability.  The CAFC’s cited prior decision that was closest to supporting Lovin’s position, In re Beaver, was decided prior to the enactment of 37 CFR 41.37, and as the CAFC pointed out, Beaver had separately argued the dependent claims before the examiner.  This opinion should be of interest to those writing appeal briefs for the BPAI and also provides cautionary advice on separately arguing the dependent claims during prosecution.

In the opinion, In re Mostafazadeh, Mostafazadeh and Scott are the inventors of U.S. Patent Number 6,034,423 (“the ’423 patent”), which issued in 2000, and relates to semiconductor packaging.  During prosecution, the claims were amended to include an additional limitation, “circular attachment pads,” in order to distinguish the claims from the prior art.  In 2001, the inventors filed a reissue application amending the additional limitation to “attachment pads.” The examiner rejected the reissue application, since the amendment was considered as an attempt to recapture subject matter surrendered during prosecution. The inventors appealed to the Board of Patent appeals and Interferences (BPAI), and the BPAI upheld the rejection.  The inventors then appealed to the CAFC, which upheld the BPAI decision.  The opinion discusses the possible recapture of subject matter surrendered during prosecution.  As such, the opinion should be of interest to those pursuing reissue applications.

Although in Radio Systems Corp. v. Accession, Inc, the CAFC considered the dismissal of a declaratory judgment action due to lack of personal jurisdiction, the opinion has received more attention for the fact that the attorney for Accession contacted the USPTO and provided prior art that was used against the patent application by Radio Systems. Accession is a New Jersey corporation and Radio Systems has their principal place of business in Tennessee. Accession owns a patent for a portable, pet-access door that can be inserted into sliding glass doors.  Radio Systems manufactures pet related products.  Mr. Sullivan, Accession’s president and only employee, had contacted Radio Systems attempting to establish cooperation in bringing a product to market based on the Accession patent.  Radio systems had applied for a patent on a related device and obtained a notice of allowance.  The attorney for Accession contacted the USPTO and provided the examiner with information on the Accession patent, resulting in the USPTO withdrawing the notice of allowance.  Finally, the attorney for Accession sent letters to Radio Systems outlining an alleged infringement of the patent, but suggesting that the dispute be settled through licensing.  Radio Systems filed for declaratory judgment of non-infringement and invalidity in District Court in Tennessee.  The District Court granted Accession’s motion for dismissal due to lack of personal jurisdiction.  Radio Systems appealed to the CAFC, which upheld the decision of the District Court.  Although the CAFC did not comment on the submission of prior art to the USPTO by Accession’s attorney, if the application was published, such a submission is almost within the rules.  The patent rules, according to 37 CFR 1.99, allows submission of prior art in a published application, but not after the notice of allowance.  If the application had not been published, the statute, 35 USC 122, requires that the application be kept in confidence; however, under the proposed Patent Reform Act, third parties can submit prior art and there would not be much question about the above described circumstances .

In Juniper Networks v. Shipley, the CAFC upheld the dismissal of a false marking suit brought by Juniper Networks against Shipley, an individual, for failure to state a claim.  Juniper Networks makes and sells computer networking products.  Shipley is an alleged “hacker” that maintains a website for the “hacker community.” Shipley also filed for and obtained two patents for a “dynamic firewall.” In the “Current Projects” page of his website, Shipley named the dynamic firewall as being patented.  The present owner of the two patents for the “dynamic firewall” sued Juniper Networks for infringement.  In the discovery phase of the infringement suit, Juniper allegedly learned that a version of the dynamic firewall operated on Shipley’s home computer starting in 1996 and was used in the website.  Additionally, in 1999 the version of the dynamic firewall was allegedly destroyed in a disk crash and was not re-created. Juniper then brought suit for false marking in District Court.  The District Court allowed a motion by Shipley to dismiss for failure to state a claim and allowed Juniper to revise the complaint.  Juniper filed the amended complaint alleging that Shipley falsely marked the website, any firewall or other security products operating on the website, as well as the web pages.  Holding that Juniper had not provided facts that indicated that Shipley had marked an “unpatented article,” the District Court dismissed Juniper’s suit without leave to amend the complaint.  Juniper appealed to the CAFC, which upheld the District Court’s decision.

In Wellman Inc. v. Eastman Chemical Co., Wellman owns two patents related to “slow crystallizing” PET resins used in plastic beverage containers and sued Eastman for infringement.  At the time Wellman filed the first application, it had commercialized a slow crystallizing PET resin, which it referred to as Ti818.  Waldman did not disclose the recipe for Ti818 in the patent application and the ranges of concentrations of ingredients provided in the patent application either did not include the concentrations used in Ti818, or the preferred concentration was not the concentration used in Ti818.

The Wellman patents also disclosed optional heat-up rate additives (“HUR”) for their PET resin.  Spinels are disclosed in the patent application, as the most preferred HUR additives and carbon black is described as a suitable additive. Ti818 includes an HUR additive called N990, a specific type of carbon black with a 290 nm particles size.  At trial, based on the testimony of one of the inventors, the District Court found that Wellman sought to maintain the use of N990 as a trade secret.  The District Court granted Eastman’s motion for summary judgment of invalidity for failure to disclose the best mode. The CAFC upheld the decision of the District Court.

In Billups-Rothenberg, Inc. v. Associated Regional and University Pathologists, Inc., Billups owns patents for a genetic test for an iron disorder, hemochromatosis, and sued Associated Regional and University Pathologists, Inc. (“ARUP”) and Bio-Rad Laboratories, Inc. (“Bio-Rad”) for infringement.  Billups asked the District Court for summary judgment of infringement and the defendants requested summary judgment of invalidity.  The District Court denied Billups’ motion and granted a summary judgment of invalidity.  Billups appealed to the CAFC.  The CAFC found that, in the first of the two patents in question, although Billups claimed methods of detecting mutationsresponsible for hemochromatosis, they did not identify any disease-causing mutations in the specification.  The CAFC found that that the first of the two patents was invalid due to lack of sufficient written description (the standard of written description being that one skilled in the art will recognize that the applicants were in possession of the invention).  In the period of time between the first and second Billups’ patents, researchers were able to identify and disclose the genetic sequence of three mutations responsible for hemochromatosis, and a patent assigned to Bio-Rad was issued for those three mutations and tests utilizing them.  The CAFC found that the second Billups’ patent was anticipated by the prior patent disclosing the genetic sequence of the three mutations.

In Tivo Inc. v. Echostar Corp., the CAFC reviewed a prior decision en banc, in order to “address the circumstances under which a finding of contempt by a district court would be proper as to infringement by newly accused products.” Tivo owns a patent for DRT hardware and software and sued Echostar for infringement.  At District Court, Echostar was found to be infringing and the Court issued a permanent injunction ordering Echostar to stop making and selling the infringing receivers, as well as to disable the infringing functionality in existing receivers.Echostar appealed to the CAFC and the CAFC affirmed the decision of infringement.  Echostar did not appeal the permanent injunction at that time.  After the decision on that appeal, Tivo moved the District Court to hold Echostar in contempt of the permanent injunction in view of a redesign that Echostar alleged would render the products non-infringing.  The District Court found that the redesigned products continued to infringe and that Echostar was in contempt, and levied sanctions against Echostar.  Echostar appealed the contempt decision to the CAFC.  Upon rehearing, the CAFC overruled the prior holding of KSM Fastening Sys., Inc. v. H.A. Jones Co.that utilized a two step inquiry.  The CAFC held, that what is “required for a district court to hold a contempt proceeding is a detailed accusation from the injured party [the one in whose favor the injunction was granted] setting forth the alleged facts constituting the contempt.” The injured party must prove that the corresponding features of the redesigned product are not sufficiently different from the features relied on for infringement, not different enough to create “a fair ground of doubt.” The CAFC also found that, by not raising the issues in the first appeal, Echostar waived arguments as to the over-breadth and vagueness of the injunction.  The CAFC vacated the judgment of contempt of the making and selling section of the injunction, but affirmed the judgment of contempt of the disablement section of the injunction.

In Lexion Medical v. Northgate Technologies, Lexion owns a patent related to a device for heating and humidifying gas for use during laparoscopic procedures and sued Northgate for infringement.  At the first trial, the jury found that Northgate induced and contributed to the infringement of the patent.  Northgate appealed.  In the first appeal, the CAFC interpreted terms in the claims differently from the District Court and remanded for further proceedings there.  On remand, Lexion filed for summary judgment of infringement.  The District Court’s interpretation of one limitation of the claims, granted summary judgment of infringement, based on an interpretation of one limitation of the claims.  Northgate appealed to the CAFC, which found that the record supported the District Court interpretation, and the CAFC affirmed the judgment of infringement.

In Rembrandt Data Technologies, LP v. AOL, LLC , Rembrandt had acquired, by assignment, patents related to some types of modems and sued a number of companies for selling products using an allegedly infringing chip set, made by Conexant.  The District Court granted summary judgment of patent exhaustion, since Conexant had a license for the patents and sold the allegedly patented items.  The District Court also granted summary judgment of invalidity for claims 3-11 of one patent due to indefiniteness, and claims 1-2 of the same patent due to failure to disclose the necessary algorithms.  Rembrandt appealed to the CAFC.  After exploring a tangled group of licenses and cross licenses, the CAFC found that Conexant was a licensee and affirmed the judgment of exhaustion.  Regarding the invalidity of claims 3-11 of one patent by what appeared to be a drafting or printing error of missing words, were mixed type claims – having both apparatus and method limitation in the independent claim, which renders the claim indefinite and unenforceable.  The CAFC affirmed the summary judgment of invalidity for claims 3-11.  Regarding claims 1 and 2, the District Court interpreted the claims as drafted in functional (means plus function) form; thereby, requiring disclosing an algorithm or structure to implement the function.  The CAFC found that for two limitations of claim 1 there are questions of material facts as to whether the limitations are drafted in functional form.  For the third limitation of claim 1, there are questions of material facts as to whether an algorithm was disclosed.  The CAFC reversed the summary judgment of invalidity for claims 1-2.

In McKesson Technologies Inc. v. Epic Systems Corp, McKesson owns a patent for a system that allows patients to access visit-related content online following a doctor’s visit, and sued Epic for inducing infringement of the method claims by licensing software to healthcare providers who provide the software to their patients.  The claims were written as such that it required several parties, patients and providers, to perform the steps of the claims.  After claim construction, Epic moved for summary judgment of non-infringement, since joint infringement requires one infringing party to exercise control over the other infringing party.  The District Court granted the judgment of non-infringement.  McKesson appealed to the CAFC.  Based on the recent CAFC decision in Akamai, the CAFC upheld the judgment of the District Court.  While the result was predictable, a decision with three opinions, the opinion of the panel, a concurring opinion requesting a rehearing en banc and a dissenting opinion showing the divergence of precedent with the recent opinions, was unexpected.  As a postscript, the CAFC has responded to the need for an en banc decision on joint infringement and has granted rehearing en banc for Akamai.

In re Tanaka is an opinion resulting from an appeal of the decision of the USPTO Board of Patent Appeals and Interferences (BP AI).  Tanaka had obtained a patent and filed a reissue application in order to add dependent claims.  The examiner rejected the reissue application after determining that a failure to add dependent claims was not an error correctable by reissue.  The BPAI upheld the examiner’s decision.  Tanaka appealed to the CAFC.  The CAFC reversed the BPAI decision citing precedent contrary to the BPAI decision.

In Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corporation, Crown owns two patents where the specification discloses two ways to save metal when joining can bodies and can ends, the lids placed on top of the can bodies. Crown sued Ball for infringement of those two patents. The District court granted summary judgment of invalidity due to lack of written description and for anticipation by a Japanese patent application. Crown appealed to the CAFC. Relying on a prior decision (Revolution Eyewear Inc. v. Aspex Eyewear Inc.), the CAFC reversed the summary judgment of invalidity to lack of written description. In Revolution Eyewear, the CAFC held that “[i]nventors can frame their claims to address one problem or several, and the written description requirement will be satisfied as to each claim” as long as the specification conveys to others possession of the claimed invention, even if the two problems are related. Because there were conflicting views in the expert reports relating to whether the Japanese patent application anticipated the claims, the CAFC reversed the summary judgment of invalidity. This opinion is a good example of the determination of sufficiency of written description in patents related to the mechanical arts.

In the other precedential opinion of this week, In re Jung, the claims in the patent application filed by Jung and Lowell Woods were rejected as obvious and the Board of Patent Appeals and Interferences (BPAI) upheld the rejection. Jung appealed to the CAFC and the CAFC upheld the BPAI decision. The CAFC stated that the Examiner is not required to present a claim interpretation (claim construction). The opinion, and Jung’s arguments, present an example of what not to do during patent prosecution.

This week also included an order, In re Violation of Rule 28(d), sanctioning attorneys for excessive confidential markings in appeal briefs.

In Innovention Toys v. MGA Entertainment, Innovention Toys owns a patent for a chess-like, light reflecting board game and sued MGA, WalMart and Toys “R” Us for infringement. The District Court found that the patent was infringed and that the claims were not obvious, and the court issued an injunction. MGA and the other defendants appealed to the CAFC. The CAFC upheld the finding of infringement, but overturned the finding of non-obviousness and vacated the injunction. The District Court had found two references to be not analogous prior art and therefore, the two references could not be used in the non-obviousness analysis. The District Court also considered the level of skill in the art to be that of a layperson. The CAFC found the references to be analogous prior art and found the level of skill in the art required for dimension to be higher than that of a layperson. The opinion is of interest because it highlights the difference in what is considered analogous prior art after KSR.

In American Piledriving Equip., Inc. v. Geoquip, Inc., American Piledriving owns a patent for pile driving devices and sued, for patent infringement, in seven District Courts around the country. Whether the accused devices infringed the patent depends largely on the interpretation (claim construction) of three terms in the claims. Of the Courts that have interpreted the claims, no two District Courts have interpreted all three terms the same way. The district courts for the Eastern District of Virginia and the Northern District of California granted summary judgment of non-infringement. American Piledriving appealed to the CAFC. The CAFC interpreted the claims, upheld the judgment of the Eastern District of Virginia for all products accused of infringement, upheld the judgment of the Northern District of California for two of the products accused of infringement, but reversed the judgment of non-infringement for one product. This opinion is an example of a typical claim construction opinion. ( However, the opinion underscores the uncertainty in claim construction and the different possible outcomes in different courts. Since claim interpretation is a mixed task (aka “mongrel task”) combining a mixture of law and facts, many have called for some deference to be given to the District Court. This opinion is the poster child for de novo review of claim construction.

The CAFC issued another order, In re Verizon Business Network Services, granting a petition to transfer a patent infringement suit to a more convenient venue. This order follows a number of other orders providing the necessary precedent for determining whether a transfer of venue request should be granted. Red River had sued Verizon and a number of other defendants for patent infringement, fighting the suit in the Eastern District of Texas. Red River is operated from Oklahoma, but incorporated in Texas. The Northern District of Texas is a more convenient venue for the parties and witnesses; however, five years ago, the Eastern District of Texas had interpreted the claims of the patents in the suit. The patents have been re-examined by the USPTO since that early suit. The CAFC found that the connection to the earlier suit was insufficient in view of the length of time that transpired and the re-examination. This order adds to the growing number of orders regarding transfer of venue.

In Old Reliable Wholesale, Inc. v. Cornell Corp., Old Reliable owns a patent for insulated roof board and sued Cornell Corp. (not be confused with the University) for infringement. The District Court granted summary judgment of invalidity due to anticipation and obviousness, andOld Reliable appealed to the CAFC. On December 11, 2009, the CAFC upheld the District Court’s decision. While the appeal was pending, Cornell had requested that it be awarded attorney’s fees based on statements made at depositions. Additionally, Cornell had also filed at the USPTO, for re-examination of the patent at issue. The USPTO had issued a notice of intent to grant certification of validity and reversed based on the CAFC’s December 11, 2009 decision. On February 2, 2010, the District Court allowed Cornell’s request for attorney’s fees. Old Reliable appealed to the CAFC andthe CAFC reversed the grant of attorney’s fees. In reversing, the CAFC applied the standard that for sanctions to be imposed: (1) that the suit was brought in bad faith, or (2) that the suit was so unreasonable that no reasonable plaintiff could believe that it would succeed. While the CAFC reviewed the arguments presented at the District Court in order to show that Old Reliable had a reasonable expectation of showing validity of their patent, the re-examination proceedings at the USPTO also indicated that Old Reliable had a reasonable expectation of showing validity. The opinion shows how difficult it is to obtain attorney’s fees and also the unexpected effects of re-examination.

In their order regarding In re BP Lubricants USA Inc., the CAFC dismissed the false marking complaint against BP, but also ordered the District Court to grant leave to amend the complaint.

In another order, the CAFC denied en-banc rehearing of Abraxis Bioscience, Inc. v. Navinta LLC, a case that reinforces the fact of whether an assignment of patent rights is automatic or whether it is a promise to assign, it is dependant on the language of the assignment. The order is notable since Judge O’Malley, a recent addition to the CAFC, filed her first dissent.