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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 May 9, 2003.



Invitrogen Corp. v. Biocrest Mfg., L.P., et al., Nos. 02-1207,-1260 (May 7, 2003)

Opinion by Rader, joined by Bryson and Dyk

The district court granted summary judgment of no infringement. The Federal Circuit vacated and remanded.

The patent at issue was a method for producing transformable E. coli cells with "improved competence," thus making them better able to accept and replicate foreign DNA for protein production. At issue was a process for producing these cells "comprising" three steps: growing the cells at a temperature of 18 to 32 degrees, rendering them competent and freezing them. The district court held that the first step of the claim necessarily excluded all cell growth carried out above 32 degrees at any time during the process. The Federal Circuit disagreed, noting that the word "comprising" in a method claim allows for additional steps before the recited steps listed in the patent. As such, the temperature range in the first, growing step of the claim did not preclude growth occurring at above 32 degrees prior to that step. This was the case even though the claim was amended from "less than 37 degrees" to the 18-32 degree range. The Federal Circuit also noted that its construction was supported by the practice in the scientific field as well as the specification.

The district court's second holding was that the term "improved competence" limited the claim but was to be construed generally rather than given a numerical definition. The Federal Circuit agreed that the phrase acted as a limitation rather than a statement of intended advantage since the patentee had added the phrase through amendment in order to distinguish it from another patent. Moreover, the general definition of "improved" was upheld since neither the claim language, specification, nor prosecution history contained a specific numeric limitation.

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The following are reviews of Federal Circuit intellectual property cases decided the week ending May 23, 2003.



Anton/Bauer, Inc. & Alex Desorbo v. PAG, Ltd., No. 02-1487 (May 21, 2003)

Opinion by Schall, joined by Mayer and Dyk.

The Federal Circuit reversed the district court's grant of a preliminary injunction, which enjoined PAG, Ltd. ("PAG") from advertising, marketing and offering to sell its PAG L75 battery pack.

Anton/Bauer manufactures and sells a wide variety of batteries and chargers used in video production. In March 1989, Anton/Bauer acquired United States Patent No. 4,810,204 (the "'204 patent"). Each claim in the '204 patent

recites a combination of a "male" and "female" plate, which when fitted together form a mechanical and electrical connection. Anton/Bauer did not sell the combination of male and female plates as claimed in the '204 patent, but sold only female plates directly to members of the portable television camera industry. It was not disputed that Anton/Bauer's female plates are designed exclusively for the combination claimed in the '204 patent, and that their use in that combination is the only possible use.

Anton/Bauer filed suit against PAG in district court, alleging that PAG's sales of its PAG L75 battery pack induced infringement of the '204 patent and/or contributed to its infringement by Anton/Bauer's customers. The PAG L75 battery pack contains a male plate, allowing it to be connected to the Anton/Bauer female plate.

The Federal Circuit found that, to succeed on its claims, Anton/Bauer had to first prove that its own customers directly infringed the '204 patent when they used PAG's accused PAG L75 battery pack in combination with its female plate. PAG argued that there was no infringement because the customers were protected by the exhaustion doctrine, by an implied license and by the doctrine of permissible repair. The exhaustion doctrine holds that the sale of an unpatented article exhausts the seller's right to control the future sale and use of that article - but that only certain circumstances exhaust the seller's patent right and result in an implied license. The Federal Circuit found that the sale of the unpatented female plate by Anton/Bauer was a complete transfer of the ownership of the plate, extinguishing Anton/Bauer's right to control its use, because the plate could only be used in the patented combination and the combination must be completed by the purchaser. Further, there were no noninfringing uses of the female plate. Therefore, the Federal Circuit concluded, Anton/Bauer's unrestricted sale of the female plate granted an implied license to its customers to use the claimed combination in the '204 patent. As a result, there was no direct infringement to support Anton/Bauer's claims of inducement of infringement or contributory infringement.

The Federal Circuit also found that Anton/Bauer had failed to demonstrate that it would be irreparably harmed.

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Dayco Products, Inc. v. Total Containment, Inc., No. 02-1497 (Fed. Cir. May 23, 2003).

Opinion by Dyk, joined by Mayer and Michel.

The district court granted summary judgment in favor of defendant on issues of inequitable conduct and invalidity. The Federal Circuit reversed, because for each allegation the defendant failed to prove that the information was material and/or there was an intent to deceive. Further, with respect to invalidity, the Federal Circuit held that the district court committed error by impermissibly grouping claims for validity analysis, rather than addressing claim validity on an individual basis, as the law requires. Finally, the Federal Circuit, having for a second time reversed a grant of summary judgment in the case in favor of defendant, said, "[t]he time has come when this case must be set for trial." The Federal Circuit reminded the parties that they had "an obligation to cooperate in narrowing the issues, and avoiding untenable arguments, which serve only to confuse the real issues before the district court."


Federal Circuit Review is intended to be informative only and not to give legal advice or opinions. Any views expressed or implied are not necessarily those of Patterson, Belknap, Webb and Tyler LLP, its attorneys or clients.

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