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Newsletters

Fish Federal Circuit Summary Service: Issue #305

December 19, 2007

Newsletters

Fish Federal Circuit Summary Service: Issue #305

December 19, 2007

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Claim Preamble Sets Field of Invention for Determining Festo Foreseeability; Patent Owner Need Not Join Exclusive Licensee in An Appeal
Schwarz Pharma. v. Paddock Labs.
Date:10/20/2007
Panel: Michel, Lourie, Moore
Author:Lourie
District court:D. Minn.
Trial judge:
Summary: Fed Cir affirms summary judgment of non-infringement for an ACE inhibitor drug composition having “an alkali or alkaline earth metal carbonate” to promote stability. The claims as filed originally recited a “metal containing stabilizer” and an “alkali or alkaline earth-metal salt,” and the accused product had magnesium oxide (not magnesium carbonate, which apparently would be covered literally by the claims). Appellate Standing: The exclusive licensee could appeal without the patent owner appealing because this related to prudential standing, which is concerned with protecting parties from multiple suits, and such protection was assured here because the patent owner was a party in front of the district court.
The merits: First, the Fed Cir refused to construe the original limitations as excluding MgO simply because one passage in the patent noted that certain other compositions were “contemplated,” especially since other passages were broader. The Festo presumption created by the narrowing amendment was not rebutted because (1) MgO was a known stabilizer generally, and it did not have to be a known stabilizer with respect to the particular class of claimed ACE inhibitors in order to be a foreseeable equivalent, because the claim preamble set forth the field of the invention (against which foreseeability is measured) broadly; and (2) the equivalent was not tangential because use of MgO was “directly implicated by the amendment,” since the amendment concerned the type of applicable stabilizers. It did not matter that some different post hoc rationale for distinguishing the prior art should be dreamed up by the litigation team.

KEY WORDS: APPELLATE JURISDICTION (YES), STANDING (YES), CLAIM CONSTRUCTION (BROAD), DUAL RULE (BROAD), FESTO (YES), AMENDMENT-BASED ESTOPPEL (YES), FORESEEABLE (YES), TANGENTIAL (NO)

Software “Means” Limitations Were Not Indefinite; Claim Differentiation Is Applied Within a Single Claim
Allvoice Computing PLC v. Nuance Communications, Inc.
Date:10/12/2007
Panel: Newman, Rader, Gajarsa
Author: Rader
District court:S.D. Tex
Trial judge:
Summary: Fed Cir reverses summary judgment of invalidity under indefiniteness and best mode doctrines, for claims directed to linking voice recognition software to other applications like word processing programs.
Definiteness: The district court (following a special master’s report from Prof. Paul Janicke) erred by importing a limitation into the function of an “output means” limitation so as to require the ability to switch between multiple applications, rather than simply being able to work with multiple applications (but not necessarily simultaneously). The district court had over-read the distinction the patentee made over some prior art that only worked with a single application. With the function properly set, the structure was the Microsoft Dynamic Data Exchange (DDE) protocol [or perhaps more correctly a processor running the protocol? see In re Allapat and WMS Gaming]. Another limitation required “means” that operate “independent of” the application, and the district court erred in requiring that the means get no information back from the application. Again, the applicants during prosecution only emphasized that their system kept track of relevant variables for the entered text, but did not require more. With the proper construction, the corresponding structure was memory that stored the relevant data. The specification also included a flowchart that, according to the testimony, could be followed by a skilled artisan.
Best Mode: This issue was driven by claim construction because the omitted information related to a feature the district court improperly read into the claim (according to the Fed Cir). Specifically, the claim only recited “forming linked data” and not “updating” or “maintaining” link data, which were separately cited features in other claims, so a best mode relating to those other features did not need to be disclosed.

KEY WORDS:INDEFINITENESS (NO), MEANS-PLUS-FUNCTION, CLAIM CONSTRUCTION (BROAD), DUAL RULE (BROAD), PROSECUTION HISTORY CONSTRUCTION (BROAD), PROSECUTION DISCLAIMER (NO), CLAIM DIFFERENTIATION (YES)

Injunction Blocking FDA from Granting ANDA Did Not Block Party From Filing An ANDA
Abbott Labs. V. Torpharm, Inc.
Date:10/11/2007
Panel:Michel, Dyk (concur in part, dissent in part), Otero
Author: Michel
District court: N.D. Ill.
Trial judge:
Summary: Fed Cir affirms decision to hold contempt hearing where Apotex filed a repeat ANDA, but reverses contempt decision because Apotex’s actions were not covered by the injunction. Apotex had previously lost an ANDA litigation, but then developed a supposed design-around formulation and had a “stalking horse” (Judge Posner’s words) file a second ANDA for it. Apotex was wrong, first, that contempt proceedings cannot occur in Hatch-Waxman cases: the artificiality of ANDA infringement does not mean it is not infringement, and courts have contempt authority even where the statute is silent. On the merits, the district court did not err in determining that the new drug was less than colorably different from the enjoined drug, so that a contempt proceeding was appropriate. The evidence supported a finding that the new drug actually infringes, so expansion of the original injunction was warranted. (Apotex could not claim that it did not have time to respond and do testing in the contempt proceeding, because it never asked for a continuance.) But the district erred in finding contempt because the injunction merely prevented Apotex from acting in the U.S., and its design-around activities happened outside the U.S. Also, the injunction blocked the FDA from granting an ANDA but said nothing about Apotex filing an ANDA.

Judge Dyk felt that there was a fair ground of doubt over whether the original injunction applied, so that there never should have been a contempt proceeding in the first place.

KEY WORDS: HATCH-WAXMAN, INJUNCTION, CONTEMPT

State University Waived Sovereign Immunity in License Agreement
Baum Research & Development Co. v. U. of Mass. At Lowell
Date: 10/10/2007
Panel: Newman, Friedman, Moore (concur)
Author: Newman
District court: W.D. Mich.
Trial judge:
Summary: Fed Cir affirms judgment upholding breach of contract claim, and holding that the U waived its 11th Amendment immunity by entering a license agreement that included a term by which the U submitted to the jurisdiction of Michigan federal courts. The Fed Cir rejected the U’s argument that the contract was ambiguous and meant that the U agreed to venue, but only if immunity challenges were otherwise overcome. The Fed Cir also rejected (as lacking support) the U’s assertion that only the legislature could waive immunity. Also, Baum was not required to prove that the U had contract authority.

KEY WORDS: SOVEREIGN IMMUNITY

Request to Force PTO to Act is Moot after PTO Acts
Somerset Pharmaceuticals, Inc. v. Dudas
Date: 10/4/2007
Panel: Michel, Prost, Moore
Author: Moore
District court: D. Del.
Trial judge:
Summary: Fed Cir affirms refusal to require PTO to act on a request for an interim term extension, because the PTO had acted on the request in the meantime, rendering the appeal moot.

KEY WORDS: MOOTNESS (YES)

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