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Fish Federal Circuit Summary Service: Issue #307

January 11, 2008

Fish Federal Circuit Summary Service: Issue #307

January 11, 2008

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New Claim Added During Reexamination Did Not Violate Anti-Broadening Rule Where Added To Distinguish Prior Art; Statements During Prosecution As Ground For Broadly Construing Claims
Cordis Corp. v. Medtronic Ave, Inc. Cordis Corp. v. Medtronic Ave, Inc.
Click here to download the case
Date: January 7, 2008
Panel: Bryson, Friedman, Keeley (sitting by designation)
Author: Bryson
District court: D.Del
Trial judge: Robinson
Summary: Fed Cir affirms judgment of infringement against Medtronic and BSC, and reverses invalidity ruling on one of Cordis’s claim found infringed. The two patents-in-suit relate to coronary stents.

Medtronic’s appeal: On the first patent, the Fed Cir rejected Medtronic’s emphasis on certain statements in the Fed Cir’s previous opinion in the case as a basis for noninfringement, ruling that (i) the argument is contrary to the previous opinion, (ii) the argument is inconsistent with Medtronic’s explanation of the prior art, (iii) Medtronic had the opportunity to present its noninfringement position to the jury, and (iv) the jury found against Medtronic on an issue of fact. On the second patent, the court of appeals agreed that JMOL was properly denied where Medtronic misrepresented the district court’s construction and where the trial court was within its discretion in qualifying Cordis’s witness as an expert under Fed. R. Evid. 702. The Fed Cir also found unpersuasive Medtronic’s various grounds for a new trial because that there was no prejudice or reversible error. Notably, one of Medtronic’s grounds for a new trial was a jury instruction supposedly contrary to KSR, but the Fed Cir ruled that the instruction (i) was not contrary to KSR, (ii) was invited error because Medtronic proposed it, and (iii) did not meet the standard of “plain error” to justify a new trial.

BSC’s appeal: As to the term “slot,” the Fed Cir found no error in a construction which covered both complete slots and half slots, because (i) the specification’s use of the term “half slots” does not foreclose the generic term from covering both types of slots, (ii) a construction is not improper if it would cover some inoperable embodiments, as long as not all embodiments are inoperable, and (iii) another undisputed construction does not cause the interpretation of “slot” to cover inoperable stents. As to the term “wall surface,” the Fed Cir held that there was substantial evidence supporting the verdict of literal infringement and infringement by equivalents. The court agreed that argument-based prosecution history estoppel did not preclude application of the doctrine of equivalents, because Cordis’s statement during reexamination did not meet the clear and unmistakable standard that would have resulted in a surrender of all equivalents. As to the term “smooth,” the Fed Cir ruled that the patentee’s use and definition of the term during prosecution was broad enough to cover the accused products literally as well as by equivalents. As to the term “substantially uniform thickness,” the claim construction did not specify how thickness should be measured and the jury was therefore entitled to credit expert testimony on the subject. Finally, the Fed Cir rejected BSC’s challenges to the district court’s evidentiary rulings, sustaining the denial of a motion for a new trial.

Cordis’s appeal: The district court invalidated one of Cordis’s claims under 35 USC 305, which prohibits enlarging the scope of a claim during reexamination. The district court, however, “incorrectly interpreted section 305. The portion of section 305 on which the district court relied permits a patentee to add claims (1) that distinguish the invention from the prior art cited under section 301 and (2) that are added in response to an office action adverse to the patentability of a claim. Claims added under either clause must satisfy section 305’s substantive limitation, which prevents patent owners from adding new claims that enlarge the scope of the patent’s coverage…. Section 305 does not require the patent owner to include an express statement that the new claims distinguish the prior art or remarks indicating how the new claims distinguish the prior art references.” Slip op. at 43. Because the invalidated claim did not broaden the scope of the original claims, the Fed Cir reversed the judgment of invalidity. The court of appeals, however, declined to reach a new issue raised by Cordis after all the briefs were submitted, and refused to order reinstatement of the damages verdict where additional proceedings may be necessary.


No Right to Jury Instruction Regarding Easier Invalidity Burden of Proof For Prior Art Not Considered By Examiner
Z4 Techs., Inc., v. Microsoft Corp. Z4 Techs., Inc., v. Microsoft Corp.
Click here to download the case
Date: November 16, 2007
Panel: Lourie, Linn, Bucklo (sitting by designation)
Author: Linn
District court: E.D.Tex.
Trial judge: Davis
Summary: Fed Cir affirms denial of JMOL and motion for new trial. The patent-in-suit relates to the prevention of software piracy.

Noninfringement JMOL: Microsoft disputed certain claim limitations. While agreeing with Microsoft that the district court improperly construed the term “user” to include computers in addition to persons and that the correct construction is “a person or a person using a computer,” the Fed Cir ruled that substantial evidence supported the verdict of infringement because, in context, the modified construction still covered the accused products. Regarding the “password” and “activation code” limitations, the court of appeals concluded that substantial evidence supported the jury’s verdict and that the specification’s criticism of the prior art did not constitute a disavowal of the accused technology. As to the terms “automatic” and “electronic,” the Fed Cir agreed with the district court’s constructions allowing some user interaction during the covered automatic registration process, and noted that there would still be infringement under Microsoft’s proposed construction.

Anticipation JMOL: The disposition of Microsoft’s 102(g) defense turned on whether the prior art product was actually reduced to practice, and specifically whether it worked for its intended purpose. While agreeing with Microsoft that the district court incorrectly defined the “intended purpose” of the invention, the Fed Cir concluded that substantial evidence supported the jury’s verdict that the prior art product did not even work to perform the corrected purpose.

Jury instructions: Microsoft challenged the jury instructions regarding corroboration, burden of proof, and obviousness. As to corroboration, the Fed Cir agreed that it was error to require that testimony of conception be corroborated in a single document, but determined that the error did not affect the outcome of the case because substantial evidence supported the verdict. As to the burden of proof instruction, the Fed Cir rejected the following proposed instruction: “[the defendant’s] burden is more easily carried when the references on which the assertion is based were not directly considered by the examiner during prosecution.” Slip op. 22. While noting that the burden may be more easily met with non-considered references, the court ruled that the proposed instruction could confuse the jury and no precedent requires such an instruction. As to the obviousness instruction, the instruction did not affect the outcome of the trial, because Microsoft did not identify any specific evidence to support a prima facie case of obviousness.

Damages under 271(f): Microsoft argued that the jury improperly assessed damages based on worldwide sales of the accused products. While noting that this issue may have been waived, the Fed Cir ruled on the merits that the jury did not rely on section 271(f) in determining damages, because (i) the complaint and jury instruction only raised infringement under section 271(a), (ii) that the products in this case and Microsoft v. AT&T are identical is not dispositive where the asserted claims and infringement issues are substantially different, (iii) no section 271(f) issues were presented to jury, and (iv) Microsoft did not present any argument or evidence segregating foreign from domestic sales.


A Rare Copyright Case at The Fed Cir
Hutchins v. Zoll Med. Corp. Hutchins v. Zoll Med. Corp.
Click here to download the case
Date: July 3, 2007
Panel: Michel, Newman, Dyk
Author: Newman
District court: D.Mass.
Trial judge: Ponsor
Summary: Fed Cir affirms summary judgment of no patent and copyright infringement, and no breach of contract. The asserted technology relates to computer-aided CPR.

Patent infringement: The district court correctly ruled that each dependent claim contained the term “general purpose computer” from the independent claim, and that the construction of this term as agreed by the parties did not cover a dedicated microprocessor as a matter of law. The district court also properly concluded that the accused system did not satisfy the term “interactive display input.”

Copyright infringement: Applying regional circuit law on issues of copyright, the Fed Cir held that “copyright does not protect the technologic process independent of the program that carries it out; that is, the copyright covers the way the process is described in the written or electronic form of the computer program, but does not cover the process independent of the copyrighted program.” Slip op. at 8. Hence, the copyright on a computer program for performing CPR did not cover standard instructions for performing CPR, even when a computerized display provided these standard instructions. The Fed Cir further held that Zoll did not infringe Mr. Hutchins’s second copyright, because (i) the individual words and phrase fragments allegedly copied were standard CPR instructions not subject to copyright, (ii) “the placing of standard words and phrases in digital form does not impart copyright exclusivity against all digitized usages of the words and phrases[,]” slip op. at 11, and (iii) the “scenes a faire” principle precluded a copyright where the terms at issue — here, the CPR instructions — were the only available forms of expression for the relevant subject.

Other allegations: The breach of contract issue did not appear to be at issue on appeal. Mr. Hutchins, however, accused Zoll of fraud by failing to disclose a new version of the accused system, and thus causing him to untimely move to add the new version after the summary judgment motions had been filed. The Fed Cir held that the district court properly acted within its discretion in excluding the new version.


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.