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Federal Circuit Review Provided by Patterson, Belknap, Webb & Tyler LLP

The following are reviews of Federal Circuit intellectual property cases decided the week ending March 28, 2003.



Eaton Corp. v. Rockwell Int’l Corp. et al., Nos. 01-1633, 02-1034, 02-1206 (March 27, 2003).
Opinion by Prost, joined by Newman and Dyk. The Federal Circuit reversed the district court’s judgment of infringement and vacated the award of damages and entry of a permanent injunction. The Federal Circuit affirmed the district court’s judgments of no invalidity and no inequitable conduct.

Claim 14 has a lengthy preamble: it claimed "a multiple step method for controlling an automatic mechanical driveline system . . . said method characterized by: . . . . " In an oral ruling, the district court found that the preamble of claim 14 was not a limitation of the claim, and that the claim language did not require automatic shifting.

The Federal Circuit found that the district court’s claim construction was erroneous. "When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention." Claim 14 was "an example of ‘the claim drafter choos[ing] to use both the preamble and the body to define the subject matter of the claimed invention,’ as opposed to a preamble reciting an intended use for an invention that is defined in its entirety by the body of the claim." The Federal Circuit concluded that the preamble limited the claimed invention—and that, given this limitation, there was no dispute that appellants did not infringe claims 14-19.

The Federal Circuit also found that appellants were not entitled to a new trial on anticipation and obviousness, notwithstanding the Federal Circuit’s rejection of the district court’s claim construction, because appellants failed to establish prejudicial error. Further, the Federal Circuit rejected appellants’ JMOL motion, pursuant to 35 U.S.C. § 102(f), that the patentee derived the claimed invention from a third party. Finally, the Federal Circuit affirmed the district court’s grant of summary judgment on appellants’ inequitable conduct claim.


The following are reviews of Federal Circuit intellectual property cases decided the week ending April 4, 2003.



Hoffman-La Roche, Inc. v. Promega Corp., No. 00-1372 (Mar. 31, 2003).
Opinion by Bryson, Joined by Archer. Dissenting Opinion by Newman.

The Federal Circuit vacated and remanded the district court’s judgment of patent unenforceability due to inequitable conduct. The defendants levied three charges of inequitable conduct: (1) that the inventors' material misrepresentations by failing to disclose contradictory test results, (2) that the inventors misstated that they actually completed a hypothetical example disclosed in the specification, and (3) that the inventors mischaracterized a prior art enzyme’s fidelity as a DNA polymerase. The Federal Circuit reversed the district court’s ruling of inequitable conduct on the first ground, affirmed the rulings on the second two grounds, and vacated and remanded the judgment of inequitable conduct for the district court to reconsider whether a sanction of unenforceability was warranted.

The Federal Circuit reversed the district court’s ruling of inequitable conduct on the first ground because the undisclosed test results were not scientifically comparable to a test performed in the prior art. The Federal Circuit upheld the district court’s ruling on the second ground, finding that by reciting an example in the past tense the inventors misrepresented the fact that they had actually completed the exemplary process in the disclosed step-by-step order. The Court also affirmed the inequitable conduct ruling on the third ground, concluding that the inventors had not adduced sufficient evidence of genuine scientific disagreement concerning the interpretation of test results to disturb the district court’s finding that the results had been mischaracterized by the inventors.

Judge Newman argued in a vigorous dissent that the district court’s ruling should be reversed in its entirety.




Riverwood Int'l Corp. v. R.A. Jones & Co., Nos. 02-1030, -1154 (March 31, 2003).
Opinion by Linn, joined by Clevenger and Schall.

Riverwood appealed the district court's final judgment of invalidity of its two patents, 5,666,789 and 5,692,361. The patents-in-suit (which also include 5,241,806) are directed toward packaging methods and machines. During prosecution of the '789 and '361 patents, Riverwood filed an IDS listing the '806 patent as "prior art," prompting Jones to argue that the '806 patent was prior art by admission. The jury agreed, and found the '789 and '361 patents invalid. The Federal Circuit vacated the judgment of invalidity, affirmed the claim construction on cross-appeal, and remanded the case on inventorship issues.

First, the Federal Circuit held that Riverwood had not waived its right to appeal the prior art decision by not objecting to the jury instructions on that issue at trial. Riverwood vigorously disputed the issue prior to trial; therefore, an objection to the jury charge would have been futile and was not necessary to preserve the issue for appeal.

The Federal Circuit then held that even though a statement during prosecution that certain matter is "prior art" will usually serve as an admission that the matter is in fact prior art, no admission would be found when the subject matter at issue is the inventor's own work. The three patents-in-suit, however, were not issued to the same persons. Therefore, the court vacated the judgment of invalidity and remanded the case for the purpose of determining "whether the portions of the reference relied on as prior art, and the subject matter of the claims in question, represent the work of a common inventive entity."

The Federal Circuit also discussed Jones' argument that the district court improperly construed the term "flight bars." The court agreed with the district court that the term "flight bars" is not explicitly defined in any of the patents-in-suit and not found in any dictionary or treatise, which explained why the district court felt it necessary to consider expert testimony on the subject. The court also found Jones' argument that the "flight bars" should be limited to unitary structures to have no basis in the record. Therefore, the court affirmed the claim construction and the judgment of infringement.


The following is a review of Federal Circuit intellectual property cases decided the week ending April 11, 2003.


Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., No. 02-1145 (April 11, 2003)Opinion by Linn, joined by Schall and Bryson.

The district court granted summary judgment of no infringement. The Federal Circuit reversed.

The patent was directed to systems and methods for performing robotic surgery. The district court found that the written description and prosecution history limited the limitation "remote location" to situations where the surgeon is located outside of the operating room. However, the written description set forth no limitations on the distance between the surgeon and the patient. Statements in the preferred embodiment are not limitations on the manner in which an invention is used. Where a written description and prosecution history fails to limit a claim term and a broader interpretation is supported by the written description, the language of the claims must be followed.


The following is a review of Federal Circuit intellectual property cases decided the week ending April 18, 2003.


Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc. et al., Nos. 02-1280, -1281 (April 15, 2003)

Opinion by Prost, joined by Clevenger and Schall.

The Federal Circuit affirmed the district court's judgment of patent unenforceability due to inequitable conduct.

The patents at issue (the ‘011 patent and the ‘277 reissue patent) claim a semi-synthesis of taxol, utilizing "protecting groups" to prevent side reactions. The patents stem from a scientific article (the "JACS article") that explained the limitations of several protecting groups (including methoxymethyl "MOM" and trimethylsilyl "TMS"). The ‘011 patent, however, did not specify any limitation as to the protecting groups that could be used in the process. Furthermore, both claim 2 and the specification stated that MOM and TMS were permissible, even preferable protecting groups. The inventors did not identify the JACS article during the prosecution of the ‘011 patent, but they filed an information disclosure statement citing the article during the prosecution of the reissue application resulting in the ‘277 patent. Due to the relation of the JACS article to the examiners review of the ‘011 patent application for enablement, the Federal Circuit held that the district court did not clearly err in finding that the JACS article was material to the prosecution of the ‘011 patent. The article was material

notwithstanding the fact that the examiner considered the JACS article during the prosecution of the ‘277 reissue application, and did not reject any claims because of it. The Federal Circuit also held that the district court did not clearly err in finding that the JACS article was intentionally withheld in an attempt to mislead the PTO.

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Silent Drive, Inc. v. Strong Industries, Inc., et al., No. 02-1329 (Fed. Cir. April 16, 2003).
Opinion by Dyk, joined by Linn and Prost.

Silent Drive and Strong are competitors in the truck axle market. Based on alleged trade secret violations, Strong obtained an injunction from a Texas state court against Silent Drive. Strong then sent letters to Silent Drive (in Iowa) and its customers (in Oregon and Minnesota) concerning the Texas injunction and a Strong patent.

Silent Drive responded by filing a three-count complaint against Strong in an Iowa federal district court. Count I asked for a declaratory judgment that the Texas injunction did not bind Silent Drive; Count II sought relief for alleged tortious interference, based on the letters sent to Silent Drive's customers; and Count III requested a declaratory judgment of invalidity and non-infringement against the Strong patent.

The Iowa federal district court dismissed Silent Drive's action for lack of personal jurisdiction. Silent Drive appealed. The Federal Circuit reversed.

On appeal, both parties agreed that general jurisdiction over Strong was lacking. The Court then looked to see if specific jurisdiction existed for any of Silent Drive's counts.

The Federal Circuit found personal jurisdiction lacking for the patent declaratory judgment count. The Court explained that, "even though the letters are 'purposefully directed' at the forum and the declaratory judgment action 'arises out of' the letters, letters threatening suit for patent infringement sent to the alleged infringer by themselves 'do not suffice to create personal jurisdiction' because to exercise jurisdiction in such a situation would not 'comport with fair play and substantial justice.'"

The Federal Circuit did not address the question of whether personal jurisdiction existed for the tortious interference count. But the Court found that personal jurisdiction existed for the claim seeking declaratory relief from the Texas state court injunction.

Finally, the Federal Circuit found supplemental jurisdiction to support the other two counts. According to the Court, the patent declaratory judgment count, the tortious interference count, and the Texas injunction declaratory judgment count all "arise out of a common nucleus of operative fact" because "they [all] concern the efforts of Strong Industries and Brooks Strong to prevent Silent Drive from manufacturing the MAXLE."