FEDERAL CIRCUIT DECISIONS FOR WEEK ENDING APRIL 19, 2013

Transcription

1 P&S FEDERAL CIRCUIT SUMMARIES VOL. 5, ISSUE 14 FEDERAL CIRCUIT DECISIONS FOR WEEK ENDING APRIL 19, 2013 Capital Machine Company, Inc. v. Miller Veneers, Inc., No (April 15, 2013) (nonprecedential) (3-0) Patent Nos. 5,562,137, 5,694,995, 5,701,938, 5,678,619, 5,819,828, and 7,395,843 Statements made during prosecution seeking to overcome anticipation rejections by arguing that the invention, unlike a reference, is directed to tapered flitches, even with respect to claims that recite a flitch, are a clear and unmistakable disclaimer of untapered flitches. Facts/Background: Capital s patents are directed to producing thin sheets of wood veneer from a portion of a log called a flitch, which is formed by cutting a log down the middle along its longitudinal axis so that the plane formed by the cut defines a flitch mounting surface and the periphery of the log defines a veneer-producing surface. Capital s patents attempt to address problems caused by the natural taper in flitches by positioning the flitch so its outer surface is parallel to the axis of the knife. Before cutting, the flitch is mounted on a staylog, which has clamping members called dogs. Capital sued Miller for infringement. After the district court s Markman ruling, the parties stipulated to summary judgment of noninfringement. Capital appealed, challenging the court s construction of several claim terms. Holding: The Federal Circuit vacated and remanded. The district court correctly construed the term flitch as a portion of a log having a taper at the butt end. Through prosecution statements, Capital argued that its invention is directed to tapered flitches. Importantly, Capital made these arguments with respect to claims which recited a flitch in addition to claims which recited a tapered flitch. The district court correctly concluded that the staylog-engaging zone must be distinct from the veneer-producing zone based on the plain language of the claims, which recite cutting a hole that extends through the staylog-engaging zone to the veneer-producing zone. However, nothing in the term staylog-engaging zone requires varying depth holes. Varying depth holes is just one way to orient a tapered flitch so that its outside surface is parallel to the slicing knife. The district court erred by construing predetermined pattern/predetermined position to require that the holes cut in the flitch to mount it to the staylog have varying depths, since an embodiment included holes of equal depth. The district court correctly construed veneer-producing zone as a portion of the flitch parallel to the veneer-slicing knife, as one of the patents-in-suit states the veneer-producing zone is arranged with its axis of rotation parallel to the slicing knife. The district court erred by construing dogs as devices without movable parts that apply force to grip or retain a flitch on the veneer slicer. There is a plain and ordinary meaning of dogs and the specification fails to limit dogs in view of that meaning.

2 Page 2 Bayer Healthcare Pharmaceuticals, Inc. v. Watson Pharmaceuticals, Inc., No , 1398, 1400 and Bayer Schering Pharma AG v. Lupin, LTD, No (April 16, 2013) (precedential) (3-0) Patent No. RE37,564 A patent is invalid when references not only illuminate a known problem but also expressly propose the claimed solution. The prior art s direct recommendation to use dosing regimens to minimize the risks of escape ovulation would have motivated one of ordinary skill in the art to implement a shortened pillfree period for use with known low-dose contraceptives. Facts/Background: The 564 patent concerns a low-dose, extended regimen for combined oral contraceptive (COC) products. Bayer developed a low-dose COC containing 20 µg of synthetic estrogen ethinylestradiol (EE) per pill to be administered with a reduced pill-free interval. While early COCs relied on a 21/7 dosing regimen including 21 active and 7 placebo pills, Bayer implemented 23/5 and 24/4 dosing regimens. Bayer demonstrated that shortening the pill-free interval to four or five days improved the contraceptive efficacy of low-dose COC formulations. Defendants filed ANDAs seeking approval to market a generic version of Bayer s product embodying the 564 patent and asserted that the 564 patent was invalid. Bayer responded by bringing patent infringement actions alleging that the ANDAs infringed the 564 patent. Before the district court, the defendants conceded that the ANDAs infringed and counterclaimed, asserting that the 564 patent was invalid for obviousness in view of numerous prior art references. The district court granted Bayer s motion for summary judgment that the claims were not invalid, and the defendants appealed. Holding: The Federal Circuit reversed. Every limitation of the asserted claims was disclosed in the cited references and the prior art provided a motivation to combine the teachings to derive the claimed subject matter with a reasonable expectation of success. Several of the cited references, as well as Bayer s expert, demonstrated that missed-pill ovulation was recognized as a concern with traditional 21/7 COCs and particularly for low-dose COC administration. The prior art s direct recommendation to use 24/4 and 23/5 dosing regimens to minimize the risk of escape ovulation would have motivated the implementation of a shortened pill-free interval for use with known low-dose COCs. Just because one of several references indicated a preference for using 24/4 or 23/5 dosing regimens in tandem with higher dose COCs does not mean the same missedpill rationale could not also motivate applying the shorter pill-free interval to similarly improve other COC preparations. Bayer s evidence of secondary indicia of non-obviousness, including alleged unexpected results, expert skepticism, industry praise, and copying by others was legally insufficient. The Federal Circuit found that bare journal citations and self-referential commendation fall short of demonstrating industry praise and that the copying of its COC preparations is not probative of nonobviousness.

3 Page 3 Speedtrack, Inc. v. Endeca Technologies, Inc., No (April 16, 2013) (nonprecedential) (3-0) Patent No. 5,544,360 References to extrinsic evidence need not be considered when intrinsic evidence provides sufficient guidance in construing a claim term. Parties may modify arguments on summary judgment in view of reexamination proceedings without necessarily being clearly inconsistent so as to present a basis for judicial estoppel. Facts/Background: Speedtrack instituted this action against, among other defendants, Walmart, alleging that Walmart s online retail website infringes Speedtrack s 360 patent. Endeca filed a complaint in intervention against Speedtrack because Walmart s alleged infringing website uses Endeca s proprietary product. After the district court issued an order construing disputed claim terms, the parties moved for summary judgment on infringement and invalidity issues. While the parties summary judgment motions were pending, the PTO granted Endeca s request for an ex parte reexamination of the asserted claims and the PTO confirmed patentability of the 360 patent. The parties submitted cross-motions for summary judgment. Speedtrack sought a determination of infringement and a determination that the 360 patent was not invalid and Endeca s motion was limited to the issue of noninfringement. The district court granted Endeca s motion for summary judgment of noninfringement predicated on the construction of category description and granted Speedtrack s motion for summary judgment of validity. Speedtrack appealed and Endeca cross-appealed. Holding: The Federal Circuit affirmed. The district court correctly reviewed the claim language, specification, and prosecution history to conclude that category description requires, but is not limited to, an alphabetic descriptive name. The claim language and the specification distinguish between category description, which comprises descriptive names and category description identifiers, which preferably comprise numerical identifiers. Since intrinsic evidence provides sufficient guidance in construing category description, references to extrinsic evidence need not be considered. The district court did not abuse its discretion in refusing to apply judicial estoppel. Speedtrack s contention that Endeca s argument before the PTO, asserting that a reference s numeric identifiers satisfied the category description limitation, contradicted Endeca s position before the district court was unpersuasive. Endeca s argument before the PTO challenged the 360 patent s validity under the broader construction that Speedtrack was advancing at the time. Further, even if Endeca had taken a modified position postreexamination, the court was not convinced that Endeca was successful enough with its previous arguments for judicial estoppel to attach. The district court did not abuse its discretion by refusing to allow Speedtrack to amend its infringement contentions to include a doctrine of equivalents argument. Speedtrack waited six months to amend its infringement contention to include a doctrine of equivalents argument after Endeca took the position that the accused method did not read upon the category description. Finally, having affirmed the judgment of noninfringement, the Federal Circuit declined to reach Endeca s argument on cross-appeal.

4 Page 4 Biogen Idec, Inc. v. Glaxosmithkline LLC, No (April 16, 2013) (precedential) (2-1) Patent No. 7,682,612 Prosecution history disclaimer overcomes the presumption of plain and ordinary meaning when applicants clearly limit their invention to what the examiner believed applicants had enabled. Facts/Background: Biogen sought a patent covering a method for treating patients with Chronic Lymphocytic Leukemia (CLL) involving administering a therapeutically effective amount of an anti-cd20 antibody. Once the anti-cd20 antibody attaches to CD20 antigens, it destroys B cells, both normal and cancerous. The patent was not limited to any particular type of anti-cd20. Dependent claims covered specific types of antibodies. The specification acknowledged that a particularly preferred chimeric anti-cd20 antibody is Rituxan (rituximab). The Examiner rejected all claims for lack of enablement, acknowledging that the specification was enabling for Rituxan, but that it was silent concerning what sort of specificity and affinity would be necessary for other anti-cd20 antibodies. In response, Biogen maintained that one could readily identify an antibody that binds to CD20 with similar affinity and specificity as does Rituxan using techniques that are well known in the art. The Examiner withdrew the rejection and the claims issued. GSK developed an anti-cd20 antibody, Arzerra, which is distinct from Rituxan in specificity and affinity. Biogen sued GSK for infringement. The district court adopted GSK s construction of anti-cd20 to mean rituximab and antibodies that bind to the same epitope of the CD20 antigen with similar affinity and specificity as rituximab. Biogen appealed the district court s claim construction. Holding: The Federal Circuit affirmed. At issue was how the PTO and the inventors understood the disputed term anti-cd20 antibody. The Federal Circuit found that statements in the prosecution history were sufficient to overcome the heavy presumption that the term carries is full ordinary and customary meaning. In responding to the examiner s lack of enablement rejection, rather than challenging the examiner s understanding of the crucial terms, the applicants argued that the specification was enabling for anti-cd20 antibodies with similar affinity and specificity as Rituxan. Therefore, it was clear that applicants were limiting their invention to what the examiner believed applicants had enabled: antibodies that have a similar specificity and affinity for the specific epitope to which Rituxan binds. In so doing, the Federal Circuit declined Biogen s argument that the district court had improperly imported a preferred embodiment into the claims. Biogen also contended unsuccessfully that because the 612 patent incorporated another patent by reference, the latter patent s definition of anti-cd20 antibody should control. However, the latter patent expressly and uniquely defined anti-cd20 antibody for use within that patent.

5 Page 5 K-Tech Telecommunications, Inc. v. Time Warner Cable, Inc., No and K-Tech Telecommunications Inc. v. DirecTV, No (April 18, 2013) (precedential) (3-0) Patent Nos. 6,785,903, 7,487,533, 7,761,893, and 7,984,469 A defendant cannot shield itself from a complaint for direct infringement by operating in such secrecy that filing of a complaint itself is impossible. Form 18 does not require a patent holder to identify an accused device by name or a specific method. Facts/Background: The patents-in-suit identify systems and methods for modifying a major channel number, a minor channel number, and/or a carrier frequency to identify a television program. K-Tech s patent infringement complaints against DirecTV and TWC stated that the FCC requires that all digital television signals in the U.S. follow specifications and protocols that define the information included in a digital television signal (e.g., major channel number, minor channel number, and carrier frequency). Because TWC and DirecTV identify programs broadcast over their cable or satellite systems with a channel number, K-Tech contended that TWC and DirecTV infringe the K-Tech patents. Each defendant moved to dismiss, alleging lack of sufficient factual specificity to state a cause of action for direct infringement. The district court noted that although the plaintiff strongly believes that defendants must be infringing the asserted patents, the plaintiff failed to explain the basis of this belief. Thus, the district court dismissed both complaints, with leave for K-Tech to file First Amended Complaints. After K- Tech did so, the district court granted the defendants motion to dismiss each of the First Amended Complaints because they failed to cure the deficiencies previously identified. K-Tech appealed. Holding: The Federal Circuit reversed and remanded. The district court applied the wrong standard to K-Tech s complaints in requiring that a plaintiff preemptively identify and rebut potential non-infringing alternatives to practicing the claims of an asserted patent. Form 18 includes no indication that a patent holder must prospectively anticipate such noninfringement arguments. The Federal Circuit was unable to affirm the district court s judgment under any alternative rationale. DirecTV and TWC argued that, even assuming Form 18 is the governing standard by which K-Tech s complaints are to be judged, K-Tech failed in its obligation under Form 18 by not identifying an infringing device or adequately connecting any alleged activity to the asserted patents. K-Tech responded, in pertinent part, that it included in each of the First Amended Complaints, a statement that the defendants have been infringing by making, selling, and using methods or systems embodying the patents. Further, K-Tech argued that both DirecTV and TWC operate in secrecy and that K-Tech is unable to ascertain exactly where the infringement is occurring or what devices are used to infringe. DirecTV and TWC knew what K-Tech s patents claimed, what K-Tech asserts their systems do, and why. Thus, K-Tech s amended complaints satisfied the touchstones of an appropriate analysis under Form 18, which are notice and facial plausibility.

6 Page 6 Aspex Eyewear, Inc. v. Zenni Optical LLC., No (April 19, 2013) (precedential) (3-0) Patent Nos. 5,737,054, 6,012,811, and 6,092,896 A party is collaterally estopped from relitigating infringement against a second defendant for a product that is materially indistinguishable from a product of a first defendant, when the party had a full and fair opportunity to litigate infringement against the first defendant, even when the party selects additional claims for litigation and additional terms for construction. Facts/Background: Aspex sued Zenni Optical for infringement of several U.S. patents directed to magnetic clip-on eyewear, in which magnets secure the bridge portions of the eyewear. The district court held that Aspex was collaterally estopped, based on earlier litigation between Aspex and Altair Eyewear for infringement of the same three patents. Aspex argued that collateral estoppel does not apply, noting that certain claims in suit against Zenni Optical were not included in the Altair litigation, and that several terms now at issue had not previously been construed or were incorrectly construed. The Federal Circuit affirmed the district court s finding in Altair construing retaining mechanisms as requiring supporting frames such as rims around the lenses in the 811 and 896 patents. On remand, the district court held that the asserted 054 claim was invalid for obviousness. Applying Altair, the district court observed that Zenni s accused rimless magnetic clip-on sunglasses were materially indistinguishable from Altair s rimless magnetic clip-on sunglasses. The district court held that Altair settled the question of whether such eyewear can infringe the 811 and 869 patents. Aspex appealed. Holding: The Federal Circuit affirmed. The Federal Circuit found no material difference as to the claims now in suit, nor difference between the Altair and Zenni Optical products to which the claims are applied. Aspex argued that collateral estoppel does not apply since the issue in the pending litigation is not identical to the Altair proceeding because the claim terms that were construed and applied in the Altair litigation are not the same as the claim terms now requiring construction. Aspex also argued that the claims of the 811 and 896 patents were not correctly construed in the Altair litigation, and that on the correct construction of the new terms, infringement by the Zenni products could be found. Zenni responded that the question of estoppel is not whether the now-asserted claims contain some terms that were not previously construed, but whether the 811 and 896 claims in suit can be asserted against Zenni for eyewear which is indistinguishable from the Altair eyewear against which the same patents were previously litigated to final judgment of non-infringement. As the Zenni and Altair products are materially identical, the assertion of different claims in a subsequent suit does not create a new issue to defeat preclusion. It is irrelevant whether the additional claims now in suit contain additional terms that were not previously construed. The selection of additional claims for litigation and additional terms for construction does not override the holding of noninfringement.

7 Page 7 Lazare Kaplan International, Inc. v. Photoscribe Technologies, Inc., No (April 19, 2013) (precedential) (2-1) Patent No. 6,476,351 On remand, a district court may not reopen a prior final judgment regarding patent validity, not appealed by either party, based on a claim construction modified by the Federal Circuit. Relief under Rule 60(b) is not a substitute for cross-appeal. Facts/Background: Lazare owns the 351 patent which claims methods and systems for using lasers to make microinscriptions on gemstones. Lazare brought suit for infringement against Photoscribe. The district court construed disputed claim terms and ultimately issued a final judgment that the asserted claims were not invalid and not infringed, either literally or under the doctrine of equivalents. Lazare filed a notice of appeal from the judgment of noninfringement. Photoscribe did not file a notice of appeal from the judgment concerning invalidity. In that appeal, the Federal Circuit vacated the grant of summary judgment of no literal infringement and the jury verdict of noninfringement under the doctrine of equivalents, as both were based on the district court s erroneous claim construction, and remanded the issue of infringement. On remand, the district court retried validity stating that it makes no sense to do otherwise. Using the broader claim construction, the district court granted Photoscribe s motion for summary judgment of invalidity and motion under Rule 60(b) for relief from its prior judgment. Lazare appealed. Holding: The Federal Circuit reversed the grant of relief under Rule 60(b), vacated the finding of invalidity, and remanded with instructions to reinstate the original judgment on validity. The district court erred by allowing Photoscribe to address validity on remand despite its failure to file a cross-appeal from the adverse final judgment of validity. The district court concluded that, because the issues of validity and infringement cannot be said to be distinct, it was not necessary for the defendants to appeal the validity issue in order for the court to hear the issue on remand. Whether or not the concepts of invalidity and infringement are closely interrelated is irrelevant. The relevant issue is whether a ruling reversing the validity holding would expand Photoscribe s rights or lessen Lazare s rights. Here, it certainly would, as a holding of invalidity would extend beyond the determination that Photoscribe s accused machines do not infringe the asserted claims. Rule 60(b) should not be used to circumvent the cross-appeal rule. Photoscribe sought to broaden the mandate rule, which dictates that an appellate mandate governs only that which was actually decided, by arguing that because the Federal Circuit did not previously address validity, the issue must have been eligible for review on remand. However, this interpretation would revive any issue not addressed in an appellate decision, thereby rendering nugatory the cross-appeal rule.