Search Team

Search by Last Name

Fish Federal Circuit Summary Service: Issue #302

June 28, 2007

Fish Federal Circuit Summary Service: Issue #302

June 28, 2007

Home » Resources » Articles

For 112(6) Claims, Bare Statement That Known Techniques Or Methods Can Be Used Does Not Disclose Adequate Corresponding Structure
Biomedino, LLC v. Waters Techs. Corp. Biomedino, LLC v. Waters Techs. Corp.
Date: June 18, 2007
Panel: Rader, Archer, Gajarsa
Author: Archer
District court: W.D. Wash
Trial judge: Lasnik
Summary: Fed Cir affirms judgment of indefiniteness because “the claim limitation ‘control means’ has no corresponding structure described in the specification as required by 35 U.S.C. 112, ¶ 6.” The court applied the rule of 112(6), because the term “control” is an adjective describing means and “is not a structure or material capable of performing the identified function.” Id. at 5. Then addressing the question “for purposes of § 112, ¶ 6, is sufficient corresponding structure disclosed when the specification simply recites that a claimed function can be performed by known methods or using known equipment where prior art of record and the testimony of experts suggest that known methods and equipment exist?”, id. at 6-7, the Fed Cir distinguished Atmel [198 F.3d at 1382] and expanded the rule in Medical Instrumentation [344 F.3d at 1211] to hold that “[t]he inquiry is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing a structure.” Id. at 11. The only references in the specification to the “control means” were, in this case, “a box labeled ‘Control’ in Figure 6 and a statement that the regeneration process of the invention may be controlled automatically by known differential pressure, valving and control equipment.” Slip op. at 4. Since “a bare statement that known techniques or methods can be used does not disclose structure,” the court affirmed the ruling of indefiniteness. Id. at 11.



Civil Contempt Order For Violation of Preliminary Injunction Is Not Immediately Appealable Under 28 USC 1292
Entegris, Inc. v Pall Corp. Entegris, Inc. v Pall Corp.
Date: June 13, 2007
Panel: Gajarsa, Linn, Moore
Author: Moore
District court: D. Mass
Trial judge: O’Toole
Summary: Fed Cir dismisses for lack of jurisdiction Pall’s appeal of a civil contempt order, but affirms order dissolving preliminary injunction. After the district court entered a preliminary injunction in the case, the patentee moved for contempt based on Pall’s sales of a product whose design was not sufficiently modified to comply with the injunction. Before the district court ruled on the motion for contempt, Pall further modified its design to comply with the injunction and then moved to dissolve the preliminary injunction in light of newly-discovered prior art. Nonetheless, the district court held Pall in civil contempt and awarded $210,000 in attorney fees, but dissolved the preliminary injunction.

Jurisdiction over contempt ruling: The Fed Cir held that it lacked jurisdiction under section 1292(c) over the interlocutory appeal of the contempt order, because (i) the contempt order on its face does not modify or continue an injunction as required by section 1292(c), and (ii) since “[t]here is a difference between a district court order that modifies an injunction and one that clarifies or interprets an injunction,” the district court’s ruling merely interpreted the preliminary injunction and did not fall within the scope of 1292(c). The Fed Cir further ruled that it lacked jurisdiction under 28 USC 1295, because an order imposing civil contempt is interlocutory in nature and thus not a “final” judgment for purpose of section 1295. Finally, the court of appeals ruled that it lacked pendent jurisdiction over the appeal, because Pall’s appeal was not “inextricably intertwined” with the cross-appeal over which it had jurisdiction. Cross-appeal of dissolution of preliminary injunction: The Fed Cir first rejected Pall’s argument that the patentee failed to challenge the alleged alternative ground for dissolving the injunction, reasoning that the primary rationale for dissolving the injunction was the validity issues raised by the newly found prior art. The Fed Cir then determined that the district court did not abuse its discretion in dissolving the injunction in light of the unchallenged claim construction, credible expert testimony, and the proper application of legal precedent.


No Public Use If Publicly Displayed Prototype Was Not Publicly Used for Its Intended Purpose; Terminal Disclaimer Filing Is Not Concession of Obviousness
Motionless Keyboard Co. v. Microsoft Corp. Motionless Keyboard Co. v. Microsoft Corp.
Date: May 29, 2007
Panel: Rader, Dyk, Moore
Author: Rader
District court: D. Ore
Trial judge: Aiken
Summary: Fed Cir affirms summary judgment of noninfringement in light of the correct claim construction, but reverses the invalidity summary judgment because the trial court misapplied the doctrine of public use and incorrectly found obviousness due to a terminal disclaimer. The patent relates to a hand-held device that frees the thumb to actuate the keys in multiple and differentiated ways.

Noninfringement: Relying on statements in the specification and a figure in the patent, the Fed Cir held that “a concavity in said housing … and a thumb-associable cluster of keys forming a keyboard within said concavity” requires that the keyboard be within the housing of the device, rather than the tops of the keys themselves forming the concavity. Because the accused joysticks and cellular phones do not meet the claim as construed, the summary judgment of no literal infringement was proper. Summary judgment of no infringement under the doctrine of equivalents doctrine of equivalents was also proper because the patentee “only presented the district court with conclusory statements about equivalents” and thus failed to “present particularized evidence that links the accused products to the patent on a limitation by limitation basis.” Slip op. at 10. Public use: The inventor disclosed the prototype embodying the invention to his business partner, potential investors (some subject to a NDA), a friend, and a typing tester before the critical date. The Fed Cir found no public use because the public “disclosures visually displayed the keyboard design without putting it into use,” i.e., the prototype was not used “for its intended purpose.” Id. at 14-15. The only instance when the prototype was actually used in a typing test was subject to a signed NDA and thus could not qualify as a public use. Obviousness: The district court erred in holding that the filing of a terminal disclaimer was a concession of obviousness, because “[a] terminal disclaimer simply is not an admission that a later-filed invention is obvious.” Id. at 16.


Evidence of Large Sales Volume and Length of Use Is Highly Relevant in Determining Likelihood of Confusion, Regardless of Marketshare
China Healthways Inst., Inc. v. Wang China Healthways Inst., Inc. v. Wang
Date: June 23, 2007
Panel: Newman, Friedman, Rader
Author: Newman
District court: TTAB
Trial judge:
Summary: Fed Cir reverses TTAB’s denial of the China Healthways Institute’s opposition to Wang’s registration of the mark “Chi PLUS.” Although the goods of the two parties were legally identical and moved in the same channels of trade, the TTAB found no likelihood of confusion because the word “Chi” appearing in Wang and the Institute’s respective marks was a relatively weak contributor to the trademark status. The Fed Cir, however, held that the word “Chi” was a significant component of the parties’ marks, because in considering the entirety of the marks “[i]t is incorrect to compare marks by eliminating portions thereof and then simply comparing the residue.” Slip op. at 6. The court ruled that the addition of the term “plus” to “Chi” in Wang’s registration “is unlikely to avoid the confusion for ‘Plus’ ordinarily connotes a related superior product, not one from a different source.” Id. at 6. The TTAB further misapplied the appropriate legal factors, requiring proof of marketshare and failing to consider evidence of actual confusion in the marketplace and the Institute’s evidence that it has sold tens of thousands of goods under its mark. As the court explained, “[e]vidence of large sales volume and length of use is highly relevant, whatever the market share.” Id.



Disbarment of Prosecutor Who Worked For Invention Promotion Company
Bender v. Dudas Bender v. Dudas
Date: June 21, 2007
Panel: Rader, Plager, Dyk
Author: Dyk
District court: D.D.C.
Trial judge: Walton
Summary: Fed Cir affirms grant of summary judgment upholding disciplinary action taken by PTO Director that excludes Bender from practicing before the PTO. Bender had contracted with an invention promoter to prepare over 1,000 design applications for individual inventors who paid for a patent but did not know the difference between utility and design patents. Because the invention promoter had a money-back guarantee if a patent did not issue, Bender prosecuted all applications as design patents in exchange for up to $15,000 every other week. After an ALJ found that Bender should be excluded from PTO practice and the PTO General Counsel sustained the finding, Bender challenged the PTO’s decision in the district court, which agreed with the PTO. On appeal, the Fed Cir first ruled that the PTO’s disciplinary determination was supported by substantial evidence, including (i) failure to properly communicate with the inventors and to represent their best interests, (ii) failure to notify clients of final rejections until after the response period has expired, (iii) improper conflicts of interest arising from his financial relationship with the invention promoter, and (iv) Bender’s failure to cooperate with the PTO’s disciplinary investigation. The court of appeals further determined that the PTO did not exceed its authority under 35 USC sections 2 and 32 in light of Chevron, and did not violate Bender’s constitutional rights. Finally, the PTO did not abuse its discretion in determining that exclusion from practice was an appropriate sanction, given Bender’s actions and the need for deterrence.



A Lot of Notable Holdings: (i) No Need to Construe Where Claim Defines Term; (ii) MedImmune Construed As Abolishing “Reasonable Apprehension of Suit” Test; (iii) On-Sale Bar Negated By Experimental Use; (iv) Rejection of Objectively Baseless Counterclaim
Honeywell Int’l Inc. v. Universal Avionics Sys. Corp. Honeywell Int’l Inc. v. Universal Avionics Sys. Corp.
Date: May 25, 2007
Panel: Rader, Gajarsa, Dyk
Author: Rader
District court: D. Del.
Trial judge: Thynge
Summary: Fed Cir vacates summary judgment of noninfringement based on alteration of a few claim constructions, affirms retention of jurisdiction over withdrawn claims, affirms decision of no invalidity under section 102(b), affirms decision of no inequitable conduct, and affirms rejection of objectively baseless counterclaim. The case involves aviation electronics, specifically terrain warning systems. Claim constructions: Although the summary judgment rested on two of five disputed terms, the Fed Cir addressed the construction of five claim terms because it “discerned factual issues in dispute regarding infringement of those remaining terms.”

(1) “look ahead distance”: Although the district court correctly relied on the specification to construe the term “look ahead distance” as a function of time, the Fed Cir found a genuine dispute of material fact and thus reversed the summary judgment based on this term.

2) “terrain floor boundary”: The Fed Cir agreed with a construction that incorporated a limitation from the specification, because the term had no ordinary meaning to a skilled artisan and “[w]ithout a customary meaning of a term within the art, the specification usually supplies the best context for deciphering claim meaning.” Slip op. at 9. The Fed Cir nonetheless reversed the grant of summary judgment based on this term because it found genuine disputes of material facts.

3) “signals representative of”: The district court improperly limited the term to numerical or instantaneous values based on an erroneous perception of the invention. Applying Phillips’ statement that “In some cases, the ordinary meaning of claim language . . . involves little more than the application of the widely accepted meaning of commonly understood words,” the Fed Cir construed the term to simply mean “inputs into the system.”

(4) “alert envelope”: Where “the claim itself provides considerable information about its meaning,” the district court incorrectly added limitations not found in the specific language of the claim. Slip op. at 14. Based on the plain language of the claim, the Fed Cir held that “one of skill in this art would agree that the claim defines this term adequately without additional limitations.” Id.

(5) “highest Hmax and lowest Hmin”: The district court erred in including an unnecessary limitation into the independent claim, where the additional limitation is specifically disclosed in a dependent claim.

Exclusion of DoE expert testimony: Honeywell’s expert did not include any discussion of DoE in his report and stated on cross examination during his deposition that “he had not formed any opinions on the matter.” Then in the redirect that took place on the second day of his deposition, the expert offered an opinion on DoE based on discussions with his counsel. Applying regional circuit law, the Fed Cir found no abuse of discretion, even though the district court did not address the four-factor test used in the Third Circuit, because “[w]ith this context, the district court properly perceived the prospect of surprise, or ‘ambush’ with Dr. Hansman’s new testimony.” Slip op. at 17.

Summary judgment on withdrawn claims: During the litigation, Honeywell represented to the defendants it would not pursue infringement of certain independent claims although it continued to assert a number of dependent claims. When Honeywell attempted to withdraw these independent claims from the litigation, the district court retained declaratory jurisdiction because the patentee’s refusal to withdraw all the claims of the patent left the defendants with a reasonable apprehension of suit. Citing MedImmune, the Fed Cir first ruled that the Supreme Court “recently eliminated this court’s ‘reasonable apprehension of imminent suit’ test,” requiring the court of appeals to examine whether there existed “an actual controversy between the parties.” Slip op. at 18. The court agreed that an actual controversy remained, because “infringement of a dependent claim also entails infringement of its associated independent claim.” Id.

On-sale bar: Applying Pfaff, the Fed Cir ruled that neither of the two prongs were met. As to the commercial offer for sale, Honeywell’s proposal to customers to develop its systems with their luxury airplane did not trigger an on-sale bar, because “Honeywell’s negotiations and proposals before the critical date evinced a purpose of experimentation.” Id. at 21. “Although the experimentation did not alter any specific part of Honeywell’s claimed system, this aspect of the record does not prejudice Honeywell’s invocation of experimentation to negate any on-sale bar. Although such evidence would strengthen the case for negating experimentation, this negating doctrine does not require changes to the claimed invention to substantiate an experimental use.” Id. As to the second prong, the system was not ready for patenting, because there was no evidence that the system worked for its intended purpose.

Public use: “A barring public use requires a public use more than one year before the patent filing date that employs a completed invention in public, without confidentiality restrictions, and without permitted experimentation.” Id. at 23. “Thus, the focus of the test is whether the use was truly experimental or in fact commercial.” Id. at 24. Honeywell’s flight demonstrations before the critical date were experimental in nature and thus did not constitute a public use, because they were not for commercial or marketing purposes. ,p>Inequitable conduct: The Fed Cir agreed that there was no inequitable conduct, where the district court found no intent to deceive and the declarations submitted during prosecution sufficed as affirmative disclosures of the allegedly withheld information. ,p>State law counterclaims: Applying the standards of the Supreme Court case Professional Real Estate Investors, the Fed Cir affirmed the denial of Universal’s state law counterclaims alleging that Honeywell brought a sham litigation for anticompetitive purposes. The suit was not objectively baseless, where the patentee conducted a reasonable pre-suit investigation and Honeywell did not use the litigation for anti-competitive purposes. Even Honeywell’s publicity about the litigation did not render the litigation objectively baseless because “patentees are permitted to make representations about their rights even though they are inaccurate.” Id. at 28.


The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.