Federal Circuit Review
The following are reviews of Federal Circuit intellectual property cases decided the week ending September 20, 2002.
DEFINITENESS; MEANS-PLUS-FUNCTION CLAIMS
Creo Products, Inc. v. Presstek, Inc., Nos. 01-1634, 02-1023 (Sept. 17, 2002).
Decision by Bryson, joined by Rader; partial dissent by Clevenger. The patents-at-issue relate to computerized techniques for correcting so-called "misregistration errors" in color offset printing presses. Such errors appear when the different color plates of an offset printing press
are not perfectly aligned. The district court found Presstek's patents not invalid, but not infringed. The Federal Circuit affirms.
Of particular interest is the Federal Circuit's rejection of Creo's contention that certain means-plus-function claims are indefinite because the specification fails to expressly disclose structure(s) capable of performing the entire recited function(s). Holding that "we consider such structure to be implicit in the disclosure," the Court observed that: "Under our case law interpreting §112, ¶6, knowledge of one skilled in the art can be called upon to flesh out a particular structural reference in the specification for the purpose of satisfying the statutory requirement of definiteness. Thus, in addressing the question whether a means-plus-function limitation satisfies the definiteness requirement, we focus our inquiry on whether one skilled in the art would have understood that the specification of each patent disclosed structure capable of performing the function recited in the claim limitation. Here, the parties agree that the manner of rotating plate cylinders in a printing press was well known in the art and need not have been explained in great detail in
DOCTRINE OF EQUIVALENTS
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., No. 95-1066 (Sept. 20, 2002). Order by Horbaly, Clerk of the Federal Circuit.
The Festo appeal is reinstated before the Federal Circuit after remand by the U.S. Supreme Court. The Federal Circuit ordered the parties to submit briefs on the following questions: (1) whether the rebuttable presumption of surrender is a question of law or fact; (2) what factors should be considered under the criteria set forth by the Supreme Court; (3) whether the case should be remanded for further factual findings; and (4) whether Festo can rebut the presumption on the facts of record. Amicus curiae briefs are invited for issues (1) and (2).
The following is a review of Federal Circuit intellectual property cases decided the week ending September 27, 2002.
DESIGN PATENTS; 102(e) EARLIER FILING; 102(g) PRIOR INVENTION
Rosco, Inc. v. Mirror Lite Co., No. 01-1271 (Sept. 24, 2002). Opinion by Dyk, joined by Lourie and Plager.
Federal Circuit Review (Continued)
Rosco sued Mirror Lite for infringement of its design patent and Mirror Lite counterclaimed for infringement of its utility patent. Both patents were directed to "'cross-view' mirrors, which are convex, three-dimensional, curved surface mirrors mounted on the front fender of a school bus, enabling the bus driver to view the front and passenger side of a school bus." The district court held Rosco's design patent invalid for functionality and the Mirror Lite utility patent invalid under 102(e) (anticipation by earlier-filed U.S. application) and 102(g) (prior invention "by another"). The Federal Circuit reversed both findings and remanded.
With respect to Rosco's design patent, the Federal Circuit stated that it applies a "stringent standard for invalidating a design patent on grounds of functionality," and that "if other designs could produce the same or similar functional capabilities, the design of the article in question is likely ornamental, not functional." Since Mirror Lite had not shown by clear and convincing evidence that there were no designs other that the Rosco design that have the same functional capabilities as Rosco's oval mirror, it was improper for the trial court to hold that the claimed design was dictated by functional considerations. Therefore, the design patent was not invalid on grounds of functionality.
With respect to Mirror Lite's utility patent, the Federal Circuit held that the district court erred by determining anticipation under 102(e) based on whether the manufacture of the mirror described in the prior art inherently results in the claimed limitation. Instead, the proper inquiry under 102(e) is whether one skilled in the art would read the prior art as inherently disclosing the claimed limitation. Since no evidence in the record supported such a finding, the Federal Circuit reversed the trial court's finding of invalidity under 102(e). Further, the Federal Circuit stated that prior invention by another invalidates a claimed invention under 102(g)(2) if the prior inventor either reduced the invention to practice first, or conceived of the invention first and subsequently reduced the invention to practice. However, the conception and reduction to practice cannot be established "nunc pro tunc"; in other words, there must be contemporaneous recognition and appreciation of the invention. Finding no evidence in the record to support the conclusion that such happened in this case, the Federal Circuit reversed the trial court's finding of invalidity under 102(g).
The following is a review of Federal Circuit intellectual property cases decided the week ending October 4, 2002.
EXPERIMENTAL USE DEFENSE TO INFRINGEMENT
Madey v. Duke University, No. 01-1567 (October 3, 2002). Opinion by Gajarsa, joined by Bryson and Linn.
In what the Federal Circuit described as a "unique patent infringement case," a former Duke professor sued the university for continuing to operate the his laboratory after his removal as director, contending, inter alia, that such continued operation infringed patents owned by the professor. The district court dismissed much of the professor's infringement case under the common law experimental use "exception" to patent infringement. The Federal Circuit strongly disagreed:
"Our precedent clearly does not immunize use that is in any way commercial in nature. Similarly, our precedent does not immunize any conduct that is in keeping with the alleged infringer's legitimate business, regardless of commercial implications. For example, major research universities, such as Duke, often sanction and fund research projects with arguably no commercial application whatsoever. However, these projects unmistakably further the institution's legitimate business objectives, including educating and enlightening students and faculty participating in these projects. These projects also serve, for example, to increase the status of the institution and lure lucrative research grants, students and faculty."
"In short, regardless of whether a particular institution or entity is engaged in an endeavor for commercial gain, so long as the act is in furtherance of the alleged infringer's legitimate business and is not solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry, the act does not qualify for the very narrow and strictly limited experimental use defense. Moreover, the profit or non-profit status of the user is not determinative."
The following is a review of Federal Circuit intellectual property cases decided the week ending October 18, 2002.
CLAIM CONSTRUCTION; EVIDENTIARY RULINGS; MARKING
Texas Digital Systems, Inc. v. Telegenix, Inc., No. 02-1032 (Fed. Cir. October 16, 2002).
Opinion by Linn, joined by Michel and Schall. Focusing primarily on numerous claim construction disputes, the Federal Circuit rejected most of the district court's claim construction rulings, affirmed its rulings on other issues, and remanded the case for a new trial on infringement, validity, and damages.
Particularly noteworthy were the Federal Circuit's strong statements regarding the importance of "ordinary meaning," as determined from contemporaneous dictionaries and treatises. According to the Federal Circuit, "[s]uch references are unbiased reflections of common understanding
not influenced by expert testimony or events subsequent to the fixing of the intrinsic record by the grant of the patent, not colored by the motives of the parties, and not inspired by litigation."
The Federal Circuit also indicated its preference that a dictionary/treatise-based "ordinary meaning" analysis should precede resort to the patent's written description "Consulting the written description and prosecution history as a threshold step in the claim construction process,
before any effort is made to discern the ordinary and customary meanings attributed to the words themselves, invites a violation of our precedent counseling against importing limitations into the claims. ... For example, if an invention is disclosed in the written description in only one
exemplary form or in only one embodiment, the risk of starting with the intrinsic record is that the single form or embodiment so disclosed will be read to require that the claim terms be limited to that single form or embodiment."
On the evidentiary issues, the Federal Circuit affirmed the district court's preclusion of a prior-art fact witness, noting the "particularly high hurdle [faced] in attempting to demonstrate abuse of discretion in light of the stringent standard for corroboration." The Federal Circuit also rejected a challenge to the plaintiff's damages expert, noting that alleged flaws in the expert's reasonable royalty analysis go to weight, not admissibility. Finally, the Federal Circuit expressly reaffirmed the doctrine of Wine Railway, 297 U.S. 387 (1936), that a patentee who does not produce the patented device need not give actual notice to an infringer before damages can be recovered. In so doing, the Court rejected an argument that Wine Railway contravenes the policy of 35 U.S.C. § 287(a).
The following is a review of Federal Circuit intellectual property cases decided the week ending October 25, 2002.
SUMMARY JUDGMENT; WRITTEN DESCRIPTION
All Dental Prodx, LLC, et al. v. Advantage Dental Products, Inc., No. 02-1107 (October 17, 2002).
Opinion by Lourie, joined by Newman and Friedman.
The invention at issue concerned a method for making a custom dental impression tray. Specifically, the dispute involved the claim limitation "original unidentified mass," which was used to refer to the molding material that forms an impression of a patient's teeth. On summary judgment, the district court found that the claim limitation "original unidentified mass" violated the written description requirement, was indefinite, and was not infringed by the accused products. The Federal Circuit reversed the invalidity findings, but affirmed the summary judgment of non-infringement.
Of particular interest are the Federal Circuit's comments regarding the written description requirement: "The application for the '498 patent as originally filed did not contain the phrase 'original unidentified mass'; indeed, there is no mention of the starting material's shape or form anywhere in the patent specification. However, the failure of the specification to specifically mention a limitation that later appears in the claims is not a fatal one when one skilled in the art would recognize upon reading the specification that the new language reflects what the specification shows has been invented."