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Fish Federal Circuit Summary Service: Issue #310

February 1, 2008

Fish Federal Circuit Summary Service: Issue #310

February 1, 2008

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A Lot of Interesting Rulings: Comply With The Rules or Face Exclusion of Evidence; Preserve Your Issues For Appeal; After-Arising Technology Can Infringe Broad Claims; No Inequitable Conduct When Merely Characterizing Submitted Art; No Permanent Injunction Where Damages Awarded for Future Sales; No Willfulness For Mere Development and Sales of Products
Innogenetics, N.V. v. Abbott Labs.
Click here to download the case
Date: January 17, 2008
Panel: Bryson, Clevenger, Moore
Author: Moore
District Court: W.D.Wis.
Trial Judge Crabb
Summary: Fed Cir reverses and remands for new trial JMOL of anticipation, vacates permanent injunction, affirms remaining issues appealed by Abbott, and affirms Innogenetics’s cross-appeal regarding willfulness. The technology-in-suit relates to tests used to detect and classify hepatitis C virus genotypes in a biological sample.

Infringement: The Fed Cir agreed with the district court that the term “as” in the phrase “detecting a complex as formed with said probe…” did not limit the claims to detecting only the recited complex, because (i) unrebutted expert opinion indicated that the skilled artisan would read the claims broadly, (ii) the specification did not support the narrower construction, and (iii) the submitted dictionary definition was not to the contrary. While sustaining the evidentiary exclusion of Abbott’s belated noninfringement argument raised for the first time in a proposed jury instruction submitted at 9:30 p.m. on the night before the start of trial, the Fed Cir also rejected this noninfringement defense — that the infringing technology arose after the invention — on the merits, because (i) there was evidence that the infringing technology existed at the time of the invention, and (ii) “[o]ur case law allows for after-arising technology to be captured within the literal scope of valid claims that are drafted broadly enough.” Slip op. at 9.

Obviousness: The district court only precluded Abbott from presenting its obviousness expert at trial, but the written order mistakenly excluded all evidence of obviousness. Abbott waited until after trial to move for a new trial based on the error in the order, and the district court denied the motion. The Fed Cir first sustained the exclusion of the expert where his report failed to “state how or why a person ordinarily skilled in the art would have found the claims of the ‘704 patent obvious in light of some combination of those particular references…. Such vague testimony would not have been helpful to a lay jury in avoiding the pitfalls of hindsight that belie a determination of obviousness.” Id. at 12. While recognizing that “an expert is not the only source for evidence that it would be obvious for one skilled in the art to combine references to reach the claimed method[,]” the Fed Cir then affirmed the denial of the new trial motion because Abbott failed to timely raise the error in the written order and only provided vague speculations to demonstrate prejudice.

Evidentiary issues re anticipation: The district court restricted the testimony of a fact witness who authored certain asserted prior art references because the fact witness failed to submit an expert report pursuant to the FRCP, and excluded a prior art reference from evidence as belatedly disclosed. The Fed Cir affirmed the testimonial restriction because Abbott failed to preserve the evidentiary issue for appeal, and sustained the evidentiary exclusion of the prior art because “Abbott’s disclosure of the Cha patent as an anticipatory prior art reference on the very last day of discovery meant Innogenetics was stripped of any meaningful opportunity to prepare an adequate cross-examination of the reference.” Id. at 17.

JMOL of non-anticipation: Before the case went to the jury, the district court granted JMOL of no anticipation on a separate reference after concluding that the testimony of Abbott’s expert rested on an inaccurate understanding of the court’s construction. The Fed Cir reversed the JMOL ruling after determining that the expert’s testimony was consistent with the proper construction of the disputed claim term.

Inequitable conduct: The district court granted summary judgment for the patentee, finding that the prosecutor’s characterization of the prior art provided to the PTO did not constitute a material omission or misrepresentation. The Fed Cir agreed, because the prosecutor’s arguments “amounted to mere attorney argument and our precedent has made clear that an applicant is free to advocate its interpretation of its claims and the teachings of prior art.” Id. at 23. The Fed Cir, however warned that “[c]ases involving affidavits or declarations are held to a higher standard.” Id.

Permanent injunction and compulsory license: The jury awarded $7 million in damages, $5.8 million of which was for past infringement and the remaining $1.2 million as a royalty payment for future sales. “When a patentee requests and receives such compensation [for future sales], it cannot be heard to complain that it will be irreparably harmed by future sales. Moreover, this factor greatly outweighs the other eBay factors in this case.” Id. at 26. The Fed Cir thus vacated the permanent injunction, and remanded to the district court “to delineate the terms of the compulsory license.” Id. at 27.

Willfulness: Applying the In re Seagate standard of “objective recklessness,” the Fed Cir ruled that Abbott’s mere development and sale of its products did not constitute a risk of an objectively high likelihood of infringement.


The Transition Term “Comprised Of” Has The Same Meaning As “Comprising”
CIAS, Inc. v. Alliance Gaming Corp.
Click here to download the case
Date: September 27, 2007
Panel: Newman, Schall, Moore
Author: Newman
District Court: S.D.N.Y.
Trial Judge: Kaplan
Summary: Fed Cir affirms judgment of noninfringement, even though the district court erred in its claim construction. Disagreeing with the district court’s narrow construction of the transition term “comprised of,” the Fed Cir held that “[t]he usual and generally consistent meaning of ‘comprised of,’ when it is used as a transition phrase, is, like ‘comprising,’ that the ensuing elements or steps are not limiting. The conventional usage of ‘comprising’ generally also applies to ‘comprised of.’” Slip op. at 5. “Correctly construed, ‘comprised of’ does not of itself exclude the possible presence of additional elements or steps.” Id. at 8. While the district court used an incorrect construction of “comprised of,” its error was harmless because prosecution disclaimer supported a narrowing construction of another claim term so that the claims could not literally cover the accused systems. The Fed Cir further held that there was no infringement by equivalents because of prosecution history estoppel.


No Direct Infringement Without Establishing That Product Necessarily Infringes Or Without Proof of a Specific Instance of Infringement; Expert’s Testing Does Not Qualify As Specific Instance of Infringement
ACCO Brands, Inc. v. ABA Locks Mfr. Co., Ltd.
Click here to download the case
Date: September 12, 2007
Panel: Lourie, Schall, Prost
Author: Lourie
District Court: E.D.Tex.
Trial Judge: Ward
Summary: Fed Cir reverses-in-part judgment regarding inducement, vacates willfulness and enhanced damages findings, and affirms-in-part judgment regarding validity and enforceability. The patents-in-suit relate to locking systems that inhibit theft of equipment such as personal computers.

Inducement: “In order to prove direct infringement, a patentee must either point to specific instances of direct infringement or show that the accused device necessarily infringes the patent in suit.” Slip op. at 7. The “necessarily infringe” option of this test was not met because the accused device could be operated in two alternative modes, one of which was non-infringing. The patentee did not satisfy the “point to specific instance of infringement” option because it failed to offer any evidence of any direct infringement by the defendants’ customers: “The sole witness at trial who testified to having used the lock in an infringing manner was ACCO’s expert, Dr. Dornfeld. However, the record contains no evidence of actual users having operated the lock in an infringing manner.” Id. at 8. The testimony of the patentee’s expert that he has used the infringing mode was insufficient. Moreover, that a product is capable of infringing even though it has a non-infringing mode does not relieve a patentee from its burden to prove specific instances of direct infringement or that the product necessarily infringes. “Hypothetical instances of direct infringement are insufficient to establish vicarious liability or indirect infringement.” Id. Because there was no infringement, the Fed Cir vacated the judgment of willfulness, enhanced damages, and award of attorney fees.

Remaining issues: The Fed Cir summarily affirmed the remaining issues based on its review of the record.


Patent Held Obvious Based On Higher Level of Skill In the Art
Daiichi Sankyo Co., Ltd. v. Apotex, Inc.
Click here to download the case
Date: September 12, 2007
Panel: Michel, Archer, Dyk
Author: Archer
District Court: D.N.J.
Trial Judge: Bassler
Summary: Fed Cir reverses final judgment in patentee’s favor because the patent was obvious. The patent at issue in this ANDA case relates to a method for treating bacterial ear infection by topically administering ofloxacin into the ear. In its section 103 ruling, the district court defined the person of skill in the art as a general practitioner or pediatrician, while Apotex argued that the skilled artisan was a researcher or a medical specialist in ear treatments. The Fed Cir agreed with Apotex because (i) the inventors were specialists in drug and ear treatments rather than general practitioners or pediatricians, and others working in the same field as the inventors had the same skill level; (ii) the animal tests described in the specification were outside of the general practitioner or pediatrician’s traditional line of work; and (iii) while the general practitioner or pediatrician would prescribe the drug treatment, they “would not have the training or knowledge to develop the claimed compound absent some specialty training such as that possessed by the ‘741 patent’s inventors.” Slip op. at 5. Based on this higher level of skill, the Fed Cir concluded that the asserted prior art reference, which recommended use of the compound by an ear specialist, rendered the patent obvious, because the patentee’s only non-obviousness argument distinguished the reference as being directed to specialists rather than general practitioners and pediatricians.


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.