Federal Circuit Review - Provided by Patterson, Belknap, Webb & Tyler LLP
The following is a review of Federal Circuit intellectual property cases decided the week ending August 30, 2002.
PRIOR USE; ON SALE BAR
Minnesota Mining and Manufacturing Co. v. Chemque, Inc., No. 00-1429 (Aug. 30, 2002). Opinion by Gajarsa, joined by Linn. Dissenting opinion by Mayer.
3M, the assignee of the patent in issue, appealed and Chemque cross-appealed the district court judge's denial of JMOL following a jury verdict finding that the independent claim in issue was neither anticipated nor infringed, but also finding that a claim dependent from that independent claim was both anticipated and infringed. 3M appealed only the finding of anticipation of the dependent claim, while Chemque cross-appealed only the finding that the dependent claim was infringed.
The Federal Circuit stated that, "while Schrödnger's cat may be both alive and dead at any given moment," claim limitations cannot be concurrently both met and not met. However, despite this rule, Chemque was judicially estopped from appealing the inconsistent verdict because they had made arguments to the trial court that the verdict was reconcilable. With respect to whether the patent was anticipated by prior use, the Court held that evidence of the distribution of samples of the invention to the public is not sufficient evidence of the use of those samples. With respect to whether the patent was anticipated by prior sale, the Court held that distributing product samples to the public, without providing any other terms for the sale of the product, does not constitute a commercial offer for sale, because "the recipient could not act in such a way that would create a contract."
Chief Judge Mayer did not dissent on any point of law. Rather, he disagreed with the majority regarding whether sufficient evidence existed in the record to support anticipation.
To read the decision, please click here:
The following are reviews of Federal Circuit intellectual property cases decided the week ending September 13, 2002
PROSECUTION HISTORY LACHES
In Re Stephen B. Bogese II, No. 01-1354 (September 13, 2002) Opinion by Dyk, joined by Prost. Dissent by Newman.
The PTO rejected Bogese's application under the grounds of Prosecution History Laches and obviousness. The Federal Circuit affirmed.
From an earlier decision of the Federal Circuit in 1987 until 1995, the applicant filed 11 continuation applications without advancing the prosecution by amending the claims or presenting any arguments. Each of those application complied with the requirements of 35 U.S.C. § 120. The PTO rejected the claims under the doctrine of the Prosecution History Laches and the Federal Circuit affirmed. Addressing the dissent, the majority said it was bound by Symbol Technologies, Inc. v. Lemelson Medical, whether or not they believed it was correct. In dissent, Judge Newman would limit Symbol to its facts. Because there was no prejudice in this case, the requirements for laches were not met.
Vanguard Research, Inc. v. PEAT, Inc., No. 01-1373 (September 9, 2002). Opinion by Linn, joined by Newman and Clevenger.
Vanguard appealed a judgement from the Northern District of Alabama dismissing with prejudice Vanguard's declaratory judgment action alleging noninfringement, invalidity, and unenforceability of PEAT's 5,534,659 patent. The district court dismissed the declaratory judgment action for lack of jurisdiction and ordered Vanguard to pay PEAT's attorneys' fees and costs.
The Federal Circuit reversed, finding that the district court incorrectly concluded that no case or controversy existed between the parties. Although PEAT had filed several actions against Vanguard regarding the same technology as covered by the '659 patent, PEAT had made no patent claims. Nonetheless, applying its holding in Goodyear Tire & Rubber Co. v. Releasomers, Inc., 824 F.2d 953 (1987), the Federal Circuit found that by suing Vanguard over the same technology as in the '659 patent, PEAT had "engaged in a course of conduct that shows a willingness to protect that technology."
Thus, the Federal Circuit found that Vanguard had a reasonable apprehension of suit on the '659 patent and reversed the dismissal of Vanguard's declaratory judgement action. The Federal Circuit remanded the case to the district court to consider whether to exercise its discretion over this case.
INTERFERENCE; AMENDED PLEADINGS; COLLATERAL ESTOPPEL
Slip Track Systems, Inc. v. Meta-Lite, Inc., No. 01-1187 (September 11, 2002). Opinion by Gajarsa, joined by Schall and Bryson.
The Federal Circuit vacated the grant of summary judgment granting priority of invention to Meta-Lite, reversed the dismissal of Meta-Lite's cross-complaint of infringement, affirmed the denial of leave for Meta-Lite to amend its complaint, and remanded the case for further proceedings. Slip Track provoked an interference between its U.S. Patent 5,127,760 (relating to a slotted wall header that keeps wallboard from cracking during earthquakes) with Meta-Lite's U.S. Patent 5,127,203 under 35 U.S.C.§291. Although both patents described the use of "wallboard," only the '203 patent claimed it as an element.
The Federal Circuit upheld the lower court's holding that granted priority of conception to Slip Track. The Federal Circuit stated that corroboration, while necessary when the inventor's testimony is relied upon for conception, is not a requisite when a physical exhibit, such as a set of drawings is presented as evidence of conception. The Federal Circuit also held that it is the common subject matter of the interfering claims, not the interfering specifications, that defines the interfering subject matter for the purpose of determining priority under §291. Because the interfering claim of the '760 patent did not include the "wallboard" limitation, "wallboard" was not an element of the interfering subject matter. The conceptual drawings of the invention of the '760 patent therefore disclosed all the elements of the interfering subject matter, and constituted physical evidence of conception.
Next, the Federal Circuit vacated the summary judgment of lack of reduction to practice against Slip Track. The Court stated that, although the adequacy of the reduction-to-practice, which must be independently corroborated, is determined by what one of ordinary skills in the art would conclude from the results of the test, testing is not a requisite to reduction-to-practice. The Federal Circuit vacated the summary judgment of no reduction to practice because (1) the invention at issue was not complicated, (2) there was expert testimony that the inventor would have known that the invention of the '760 patent would work for its intended purpose, and (3) there was corroborative physical evidence with respect to construction of the second prototype. The Court then remanded the case to determine whether the first or second prototypes constituted reduction-to-practice under the preponderance of evidence standard.
The Federal Circuit affirmed district court's denial of leave for Meta-Lite to amend its complaint under F.R.C.P. 16(b) because Meta-Lite was unable to show good cause. Applying the regional circuit law, the Federal Circuit overturned the district court's decision that Meta-Lite was collaterally estopped from bringing a cross-complaint for infringement of the '203 patent by a state court's non-final decision that Slip Track was a 50% owner of the '203 patent. The Federal Circuit held that collateral estoppel does not apply until the final disposition of an issue. As a result, the Court reinstated Meta-Lite's cross-complaint and ordered it held in abeyance pending final resolution of the ownership issue in the state court.