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Fish Federal Circuit Summary Service: Issue # 290

January 5, 2007

Newsletters

Fish Federal Circuit Summary Service: Issue # 290

January 5, 2007

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No Prosecution Disclaimer From Ancestor Application Where Claim Term Was Different
Ventana Med. Sys., Inc. v. Biogenix Labs., Inc.
Date: Dec. 29, 2006
Panel: Lourie (dissent), Dyk, Prost
Author: Prost
District court: D.Ariz.
Trial judge: Collins
Summary: Fed Cir vacates stipulated judgment of noninfringement for patents covering methods of “dispensing” reagents “in a reagent container” onto a microscope slide. The district court erred in requiring direct dispensing from the reagent container to the slide (and to have found a disclaimer of “sip and spit” dispensing) because: (1) the claims did not include such a limitation and the term “dispensing” definitely includes “sit and spit” dispensing (the requirement of dispensing the fluid in the container “onto” the slide did not create any such limit); (2) general dispensing of prior art systems in the “Background” did not create a “complete surrender” because numerous systems (including “direct dispensing” systems) were criticized and the statements did not criticize anything more specific than “limited performance” of the prior art systems; (3) it did not matter that every embodiment used direct dispensing, and claims are not required to address every feature disclosed in the specification; (4) there was no prosecution disclaimer from statements in an ancestor application because those statements were made with respect to claims that explicitly require direct dispensing, and the prosecution for the general “dispensing” term was very broad; and (5) there was no prosecution disclaimer from statements in descendant applications because, although the claims there did not say “direct,” they did recite other limitations that limited the position of the container vis-à-vis the slide (and a terminal disclaimer over the patent-in-suit in one of those cases was not an admission of anything).

KEY WORDS: CLAIM CONSTRUCTION (BROAD), RELATED PATENTS, PROSECUTION DISCLAIMER (NO), PROSECUTION HISTORY CONSTRUCTION (NO), EVERY EMBODIMENT, DUAL RULE (BROAD), ORDINARY MEANING,

Tightly-Controlled Clinical Trials Were an Experimental Use; No Anticipation From Disclosure of Large Family of Compounds
Eli Lilly & Co. v. Zenith Goldline Pharma., Inc. v. Click here to download the case
Date: Dec. 26, 2006
Panel: Rader, Schall, Gajarsa
Author: Rader
District court: S.D.Ind.
Trial judge: Young
Summary: Fed Cir affirms judgment (bench trial) of validity and no inequitable conduct for Lilly’s patent and olanzapine (Zyprexa) and its use to treat schizophrenia (the claims are essentially worded that broadly). Anticipation: The prior art did not anticipate under In re Petering and In re Schaumann simply by disclosing compounds from the same family as the claimed compounds, because those cases involved disclosures in a small family that would cause a POSITA to immediately think of each member of the family (here, the family had millions of members across a broad range). Obviousness: The district court did not err in concluding that a POSITA would believe that the substitution distinguishing the claimed invention from the prior art would not have had a positive effect (the prior art taught that substituting chlorine would be good, but said nothing about substituting hydrogen, as claimed by Lilly); a POSITA would not have started with the particular compound identified by Zenith in any event; if the prior art suggested anything, it was to make a different substitution, and it even taught away; structural similarity is not the only factor for obviousness; olanzapine had unexpected benefits (fewer bad side effects than all the prior art); and the prior art said nothing about the other steps that would be needed to make olanzapine. The Fed Cir cited Yamanouchi (FC 2000) as a similar case. Even if Zenith had made a prima facie case, Lilly had oodles of objective indicia of nonobviousness. Public Use Bar: The district court properly found Lilly’s clinical trials to be experimental, and not a public use: Lilly did them in-house, restricted access, kept close tabs on participants, and tested safety and efficacy rather than treating the patients per se. Inequitable Conduct: Lilly’s failure to disclose dog tests that showed toxicity problems, was not contrary to points Lilly made during prosecution because the PTO was concerned instead with cholesterol effects. An affidavit submitted to the PTO was not material because it was not false. On a separate, nondisclosure, issue, Lilly disclosed a patent having the same technical disclosure as the “withheld” patent, and the examiner found a “withheld” article and allowed the claims over both. Therefore, there was no materiality or deceptive intent.

KEY WORDS: ANTICIPATION (NO), OBVIOUSNESS (NO), OBJECTIVE INDICIA, UNEXPECTED RESULTS (YES), MOTIVATION TO COMBINE (NO), PUBLIC USE (NO), INEQUITABLE CONDUCT (NO)

Order Striking of Supplemental Expert Report Vacated Where Error and Prejudice Were Shown; Futile Leave to Amend Counterclaim Properly Denied
Kemin Foods, L.C. v. Pigmentos Vegetales Del Centro S.A. de C.V. v. Click here to download the case
Date: Sept. 25, 2006
Panel: Newman, Mayer, Bryson
Author: Bryson
District court: S.D.Iowa
Tial Judge: Gritzner
Summary: Fed Cir (1) affirms award of cost and judgment of nonobviousness of the ‘714 patent, enforceability of the ‘714 and ‘564 patents, and noninfringement of the ‘714 patent; (2) vacates order striking supplemental expert report; (3) affirms permanent injunction regarding ‘564 patent; and (4) affirms denial of leave to amend dismissed unfair competition, misuse and antitrust counterclaims. The patents-in-suit include process and product claims related to purified lutein extracted from plants and incorporated into dietary health supplements. (1) Patent issues (a) Nonobviousness of ‘714 patent: Substantial evidence supported the nonobviousness jury verdict because the Poultry Science prior art article did not teach how to remove all solvent as required by the asserted claim, and did not satisfy other explicit claim limitations. (b) Enforceability of ‘714 patent: The district court did not err in finding that, although it was material, the undisclosed Poultry Science prior art was not highly material. Nor did the trial court err in finding no clear and convincing evidence of intent to deceive based on the testimony received at trial and the tangential involvement in prosecution by the person accused of inequitable conduct. (c) Enforceability of ‘564 patent: Patentee’s failure to disclose its prior use of the claim process in making poultry pigments was neither material nor implicated any intent to deceive, especially given the lack of recognition that the poultry pigment process was usable in purifying the unrelated lutein. (d) Award of cost: The district court did not abuse its discretion in awarding the patentee its full costs as the prevailing party, even though the patentee prevailed on only one out of two infringement claims, the infringer effectively designed around the injunction regarding the ‘564 patent, and there was no apportionment of costs based on the party’s relative successes on various litigated issues. (e) noninfringement of the ‘714 patent: Substantial evidence supported the jury’s noninfringement verdict, given the conflicting testing evidence presented at trial and the district court’s proper adoption of the claim constructions issued by the Federal Circuit in a previous appeal in this case. (2) Evidentiary issue: The district court abused its discretion in striking the patentee’s supplemental expert report, by misunderstanding the expert report as a belated attempt to assert a new patent claim (claim 5) allegedly not disclosed in the complaint. But the complaint’s language “including without limitation claim 1” was broad enough to encompass claim 5, and the patentee diligently pursued discovery on claim 5 as to put the infringer on notice. Moreover, the patentee was prejudiced by the striking of its expert report because the infringer’s design-around may be covered by claim 5. (3) Permanent injunction: Because the injunction only encompasses the specific activities adjudged to be infringing, the district court’s injunction was not unduly narrow. (4) Unfair competition, misuse, and antitrust counterclaims: The infringer’s counterclaims hinged on establishing that the asserted patents were invalid and unenforceable. Given its judgment of nonobviousness and enforceability, the district court dismissed the counterclaims without leave to amend or supplement. The Fed Cir agreed because FRCP 15 does not require grant of leave where the amendment would be futile. Moreover, other aspects of the counterclaims were also futile where the patentee’s legal position was reasonable enough to avoid liability under the false marking statute, and the infringer failed to establish that the patentee acted in bad faith in informing third-parties that there was continued infringement of its patents.

KEY WORDS: NONOBVIOUSNESS, INEQUITABLE CONDUCT, MATERIALITY, INTENT TO DECEIVE, AWARD OF COSTS, NONINFRINGEMENT, SUBSTANTIAL EVIDENCE, JURY VERDICT, EXPERT REPORT, EVIDENTIARY RULINGS, PERMANENT INJUNCTION, COUNTERCLAIMS, PLEADINGS AMENDMENT/SUPPLEMENTATION

Goods Delivered In The Same Media Are Not Presumptively “Related” for Purposes of Likelihood of Confusion Analysis
M2 Software, Inc. v. M2 Communications, Inc. v. Click here to download the case
Date: June 7, 2006
Panel: Mayer, Bryon, Prost
Court: TTAB
Summary: Fed Cir affirms TTAB’s dismissal of M2 Communications’ TM opposition. Applying the DuPont factors, the TTAB correctly found no likelihood of confusion. First, the goods in question were not related and the channels of trade were different, because M2 Communications’ goods and operations related to the fields of pharmacy and medicine, while M2 Software’s goods and business focused on the film and music industries. The Fed Cir also held that “it was proper for the board to ground its determination of relatedness in the fields for which the goods are created, rather than the media format in which they are delivered. . . . Moreover, given the pervasiveness of software and software-related goods in society, it would be inappropriate to presume relatedness on the mere basis of goods being delivered in the same media format….” 450 F.3d at 1383. Moreover, even if factors under 15 USC 1125(a) were applicable to the appealed proceedings under 15 USC 1052(d), the appellant failed to offer any evidence establishing confusion under that statutory section. Second, while the “M2” portions of the marks at issue were identical, there was no likelihood of confusion when the marks were considered as a whole. Finally, the TTAB did not err in weighing the strengths of the marks and lack of bad intent in the pending TM application. Because the TTAB properly applied and considered the DuPont factors, the Fed Cir affirmed the board’s no likelihood of confusion determination.

KEY WORDS: TRADEMARK, LIKELIHOOD OF CONFUSION, RELATED GOODS

Claim Term Missing Antecedent Basis Or Requiring Construction Does Not Necessarily Render Claim Indefinite
Energizer Holdings, Inc. v Int’l Trade Comm’n. v. Click here to download the case
Date: Jan. 25, 2006
Panel: Newman, Archer, Schall
Author: Schall
Court: ITC
Summary: Fed Cir reverses and remands the ITC’s finding that a patent for an electrolytic alkaline battery cell substantially free of mercury was indefinite because a claim term lacked antecedent basis. The Fed Cir, however, ruled that “[c]laim definiteness is analyzed ‘not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art.'” 435 F.3d at 1370. Because “an antecedent basis can be present by implication,” the lack of antecedent basis does not necessarily render a claim indefinite as long as the claim “has a reasonably ascertainable meaning [which] must be decided in context.” Id. at 1370-71. Here, none of the parties argued a lack of understanding of the claims despite the absence of antecedent basis. Moreover, the ITC “erred in holding that the need to construe a claim, or the proffer of alternative constructions, renders the claim indefinite. A claim that is amenable to construction is not invalid on the ground of indefiniteness.” Id. at 1371. Because the claims at issue were amenable to a specific construction, the Fed Cir reversed the ITC’s indefiniteness finding.

KEY WORDS: INTERNATIONAL TRADE COMMISSION, ITC, INDEFINITENESS, ANTECEDENT BASIS

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