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Fish Federal Circuit Summary Service: Issue #314

February 19, 2008

Fish Federal Circuit Summary Service: Issue #314

February 19, 2008

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Adopting An Ordinary Meaning With Functional Or Process-Like Attributes Does Not Violate Rule Precluding Importation of Process Steps Into Product Claims
Miken Composites, L.L.C. v. Wilson Sporting Goods Co.

Date: February 6, 2008
Panel: Newman, Schall, Linn
Author: Linn
District Court: D.Minn.
Trial Judge: Doty
Summary: Fed Cir affirms summary judgment of noninfringement on a patent related to baseball and softball bats.

Claim construction: The patentee disputed two claim terms on appeal: “insert” and “gap.” As to the term “insert,” the patentee challenged the construction “something inserted or intended for insertion” as improperly importing a process step into a product claim. The Fed Cir disagreed, because (i) the construction is consistent with the term’s ordinary meaning as shown from general dictionaries, (ii) the court’s opinion in Nystrom [424 F.3d at 1145-46] does not preclude the adopted construction, and (iii) “[t]hat this ordinary meaning has functional attributes does not change the fact that the claim recites a structural component, albeit one possessed with certain understood characteristics.” Slip op. at 9. The Fed Cir also stated in a footnote that the adopted construction of “insert” is fully consistent with another construction of the same term in the same claim of the same patent issued in an unrelated appeal. Id. at 10 n.*. As to the term “gap,” the district court adopted the Fed Cir’s construction of the term from a previous unrelated appeal involving this same patent, and the Fed Cir found no error in that decision.

Infringement: The patentee accused two types of bats, the carbon bats and non-carbon bats, of infringement. With regards to the carbon bats, the Fed Cir ruled that the patentee failed to present any evidence that any relevant parts of the accused bats literally met the “insert” limitation as construed. There was also no infringement under the doctrine of equivalents, because (i) the patentee only provided evidence of equivalency of the products as whole, rather than equivalency on an element-by-element basis, and (ii) there was no particularized testimony from an expert to meet the legal test. With regards to the non-carbon bats, the Fed Cir agreed that there was no infringement because (i) the patentee did not offer any evidence satisfying the term “gap” as construed or showing an insubstantial difference, and (ii) the test results offered by the patentee are not pertinent to the infringement issues.


Patent Directed To a Gene Sequence Is Enforceable Against Plant Growers; Technical Expert May Rely on Technical Data Even If He Did Not Generate It Himself
Monsanto Co. v. David

Date: February 5, 2008
Panel: Lourie, Bryson, Moore
District Court: E.D.Mo.
Trial Judge: Autrey
Summary: Fed Cir affirms-in-part judgment of infringement and award of attorney fees, and vacates-in-part portions of damages award in a lawsuit brought by Monsanto against a farmer for re-use of patented genetically-engineered seeds in violation of an agreement prohibiting the saving and re-using of such seeds. The patent claims a gene sequence, not a plant or a seed.

Infringement: On appeal, David challenged the finding of infringement based on four grounds. First, David argued that Monsanto’s patent is not enforceable against him, because the Supreme Court’s J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l [534 U.S. 124 (2001)] limits protection over plants to the Plant Patent Act and Plant Variety Protection Act, so that a gene sequence patent cannot be enforced against growers of plants. The Fed Cir ruled that J.E.M. “explicitly refused to limit the extent of patentable subject matter” as David argued. Slip op. at 7. Second, the Fed Cir disposed of David’s argument that he should be able to save seeds from his own harvest, because the court of appeals already rejected that argument in Monsanto Co. v. McFarling, 302 F.3d 1291 (Fed. Cir. 2002). Third, the Fed Cir sustained the district court’s infringement findings, based on Monsanto’s scientific field tests and the inconsistency in David’s testimony. Finally, the Fed Cir saw no abuse of discretion in the district court’s admission of the testimony of Monsanto’s expert, even though the test results underlying the opinions were generated by Monsanto’s scientific team and not by the expert himself. “[N]umerous courts have held that reliance on scientific test results prepared by others may constitute the type of evidence that is reasonably relied upon by experts for purposes of Rule of Evidence 703. . . . Koppatschek [the expert]’s reliance on the scientific reports prepared by his team is therefore the type of reliance that is reasonable for expert witnesses. Furthermore, Koppatschek’s testimony is admissible, regardless of the admissibility of the seed report.” Slip op. at 10.

Attorney fees: The Fed Cir sustained the award of attorney fees because (i) David knew that saving seed violated the agreement he made with Monsanto, but did so anyway and then tried to cover it up, (ii) the agreement with Monsanto was valid pursuant to the ruling in McFarling, and (iii) the costs statute of 28 U.S.C. 1920 does not set any ceiling over the maximum amount of fees that a party may recover.

Reasonable royalty: While agreeing that the district court properly adopted a $55 royalty rate instead of the $66 rate recommended by Monsanto’s expert, the Fed Cir ruled that the adopted royalty base (the number of infringing seed units) was clearly erroneous because the district court incorrectly understood David’s testimony as supporting the higher royalty base than what the record supported.


Grandparent Patent Serves as Invalidating Prior Art Due to Inadequate Incorporation Clause in Intervening Patent in Family Tree
Zenon Envtl., Inc. v. U.S. Filter Corp.

Date: November 7, 2007
Panel: Newman (dissent), Lourie, Linn
Author: Lourie
District Court: S.D.Cal.
Trial Judge: Brewster
Summary: Fed Cir reverses judgment that the asserted claims of U.S. Patent No. 6,620,319 were not invalid as anticipated, and declines to reach cross-appeal of summary judgment of non-infringement. The ‘319 patent discloses a water filtration system that uses a vertical skein of hollow fiber membranes in conjunction with a gas distribution system.

At issue was whether the ‘319 patent was entitled to priority from its grandparent patent. The ‘319 patent is a continuation of the ‘039 patent, which is a division of the ‘677 patent, which is a division of the ‘250 patent, which is a continuation-in-part of the ‘083 patent, which is a continuation-in-part of the ‘373 patent (collectively, the ‘083 and ‘373 patents are “the grandparent patents”). Defendants argued that the ‘319 patent was not entitled to claim priority from the grandparent patents because the intervening ‘250 patent failed to incorporate by reference the gas distribution system disclosed in the grandparents. The incorporation clause in the ‘250 patent states that “[t]he vertical skein is not the subject matter of this invention and any prior art vertical skein may be used. Further details relating to the construction and deployment of a most preferred skein are found in the parent U.S. Pat. No. 5,639,373, and in Ser. No. 08/690,045, the relevant disclosures of each of which are included by reference thereto as if fully set forth herein.” Zenon, 506 F.3d at 1379 (quoting the ‘250 patent) (emphasis added by Zenon). The Fed Cir was “not persuaded” that this language “incorporate[d] by reference the entire disclosures” of the grandparent patents, because “[t]he plain language expressly limits the incorporation to only relevant disclosures of the patents, indicating that the disclosures are not being incorporated in their entirety,” and that “the plain language indicates that the subject matter that is being incorporated by reference pertains to the details relating to the construction and deployment of a vertical skein.” Id. “What apparently occurred is that, in filing the ‘250 patent application, the gas distribution system disclosed in the ‘373 patent was replaced with a different gas distribution system, but, when the ‘319 patent application was filed, the original gas distribution [system] was restored. Thus, the chain of continuity was broken.” Id. at 1381. Since the parties agreed that the grandparent patent contains each and every element of the claimed invention of the ‘319 patent, the Fed Cir held that the inadequate incorporation clause broke the continuity of disclosure and rendered the grandparent parents invalidating prior art under section 102.

In dissent, Judge Newman disagreed that a grandparent patent can serve as invalidating prior art for a grandchild patent “that contains the text” of the grandparent. Id. at 1382 (Newman, J., dissenting). Justice Newman particularly disagreed with the majority’s “creation of a new area of de novo appellate authority,” id. at 1385 (Newman, J., dissenting), stating that “[t]he question of what material would be understood as incorporated is a question of fact” and should have therefore been reviewed for clear error rather than de novo, id. at 1384 (Newman, J., dissenting).


Claims Interpreted in Light of Specification, Purpose of Invention, and Patentee’s Own Products
Osram GmbH v. Int’l Trade Comm’n

Date: October 31, 2007
Panel: Newman, Rader, Dyk (dissent)
Author: Newman
District Court: ITC
Trial Judge: Bullock
Summary: Fed Cir reverses the ITC’s decision that Section 337 was not violated in light of the Commission’s incorrect construction of the claim term “mean grain diameter,” which was present in all of the patents-in-suit. These patents generally relate to light-emitting diode devices (“LEDs”) containing compositions of luminous pigment powders that include phosphor particles. The ITC found noninfringement and a lack of domestic industry because it determined that the “mean grain diameter” of these phosphor particles should be calculated based on the volume, rather than the number, of these particles or “grains.” The Fed Cir disagreed, holding that “[t]he Commission erred in construing the claims as requiring the volume-based method, contrary to the ordinary meaning of the term as reflected in the specification and the testimony, and at odds with the purposes of the invention.” Osram, 505 F.3d at 1358. “This conclusion is reinforced by the undisputed fact that the volume-based measure would exclude the [plaintiff’s] products that the patents were designed to cover.” Osram, 505 F.3d at 1358. As the majority noted, “a claim interpretation that would exclude the inventor’s device is rarely the correct interpretation.” Osram, 505 F.3d at 1358 (citing Modine Mfg. Co., 75 F.3d 1545, 1550 (Fed. Cir. 1996)). Applying the volume-based claim construction, it was undisputed that the accused products infringed the asserted claims, and also that Osram’s domestic products satisfied the technical prong of Section 337’s domestic industry requirement.

In dissent, Judge Dyk noted that expert witness testimony established that the volume-based definition was used in the commercial sales portion of the industry, whereas the numerical average definition was used primarily for research and development purposes. Noting that the claims and specifications were silent as to which definition should be applied, Judge Dyk felt that the commercial sales definition – i.e., the volume-based definition applied by the ITC – was correct in this case, since the specifications made “it quite clear that a commercial invention is being described.” Osram, 505 F.3d at 1361 (Dyk, J., dissenting). Judge Dyk also disagreed with the majority’s reasoning that a claim should preferably be construed to include the patentee’s own products, noting that infringement should be “determined on the basis of the claims, not on the basis of a comparison with the patentee’s commercial embodiment of the claimed invention.” Osram, 505 F.3d at 1361 n.2 (Dyk, J., dissenting).



Federal Question Jurisdiction Exists Over Legal Malpractice Claims Where Infringement Is A Necessary Element of The Malpractice Claim
Air Measurement Techs. Inc. v. Akin Gump Strauss Hauer & Feld L.L.P.

Date: October 15, 2007
Panel: Michel, Lourie, Rader
Author: Michel
District Court:W.D.Tex.
Trial Judge: Furgeson
Summary: Fed Cir affirms denial of Akin Gump’s motion to remand to state court the legal malpractice suit brought against the law firm. After Air Measurement brought suit in district court for malpractice and other state law causes of action, Akin Gump removed the case under 28 U.S.C 1338. After three years of litigation in federal court, Akin Gump moved to remand the case to state court for want of federal jurisdiction, and the district court denied the motion.

After noting that there was no diversity jurisdiction, the Fed Cir analyzed whether federal jurisdiction existed over a legal malpractice suit. According to the test enunciated in Christianson, federal question jurisdiction would exist where the well-pleaded complaint implicates patent law as a necessary element of the state law cause of action. In this case, the malpractice claim arose from alleged errors in patent prosecution and litigation, and required Air Measurement to “establish that they would have prevailed in the prior litigation but for Akin Gump’s negligence that compromised the litigation. This is called the ‘case within a case’ requirement of the proximate cause element of malpractice.” Slip op. at 8 (underline in original). “Because proof of patent infringement is necessary to show AMT would have prevailed in the prior litigation, patent infringement is a ‘necessary element’ of AMT’s malpractice claim and therefore apparently presents a substantial question of patent law conferring § 1338 jurisdiction.” Id. at 8-9. The Fed Cir further noted that, to prevail on the malpractice claim Air Measurement may also have to show that it would have prevailed against the invalidity defenses raised when it asserted its patents.

The Fed Cir then considered and rejected Akin Gump’s attempt to defeat federal jurisdiction. First, the court of appeals disagreed with Akin Gump that the “impaired settlement value” theory raised by Air Measurement would not implicate any infringement analysis, because the theory is one of damages rather than liability. Second, the Fed Cir interpreted recent Supreme Court’s opinions addressing § 1331 jurisdiction over state law claims, and concluded that the opinions permits § 1338 jurisdiction in this case.

Ed. Note: In a previously summarized companion case, the Fed Cir held that it had appellate jurisdiction, instead of the regional circuits, over legal malpractice appeals where determination of claim scope was necessary to the resolution of the dispute. Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281 (Fed. Cir. Oct. 15, 2007).


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.