Federal Circuit Review – Issue 5 – 01-22-2014

Each week in the Federal Circuit Review, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. We welcome any feedback you may provide.

– Joe Robinson and Bob Schaffer




Written Description Controls Breadth of “Adapted To” Limitation

In re Giannelli, No. 2013-1167, 2014 U.S. App. LEXIS 584 (Fed. Cir. Jan. 13, 2014) (Lourie, J.).Click here for a copy of the opinion.

Raymond Giannelli filed an application for a patent on a rowing exercise machine with a handle “adapted to” be moved from a first to a second position by a pulling force. The PTO rejected the application, and Giannelli appealed to the Patent Trial and Appeal Board (Board). The Board characterized the dispositive issue was whether the prior art patent was “capable of being used by exerting a pulling force on the handles in a rowing motion.” Slip op. at 5. Although the Board conceded that using the prior art reference’s apparatus as a rowing machine “may not fully achieve the ‘purpose’ of” the apparatus, it could be used in that manner and therefore disclosed the limitations of Giannelli’s claims.

The Federal Circuit reversed. The Court explained that the written description controls whether the meaning of the functional phrase “adapted to” was broad—as in “capable of” or “suitable for”—or narrow—as in “made to,” designed to,” or “configured to.” Slip op. at 7. Here, the written description pointed to the narrower meaning. So, the Board erred by concluding that the claims were obvious based on the finding that “a rowing exercise could be performed on the machine disclosed in the [prior art patent,] and not whether it was obvious to modify the chest press machine to contain handles ‘adapted to’ perform the rowing motion by pulling on them.” Id. at 8.


Contempt Order Vacated for Lack of Claim Construction

Proveris Scientific Corporation v. Innovasystems, Inc., No. 2013-1166, – 1190, 2014 U.S. App. LEXIS 585 (Fed. Cir. Jan. 13, 2014) (Prost, J.). Click here for a copy of the opinion.

In 2006, Proveris sued Innovasystems (Innova) for infringing a patent related to aerosol spray plumes. Eventually, the district court entered a permanent injunction based Innova’s admitted infringement of certain claims. Innova modified its infringing product in an attempt to design around independent claim 3 of the patent, but Proveris filed a motion for contempt based on Innova’s manufacture and sale of the new product. The district court concluded a Markmanhearing was not necessary for the contempt proceedings because Innova could have raised claim construction issues in the underlying actions but didn’t, and because Innova had already challenged validity of claim 3. In either case, the district court believed Innova could not raise “new” arguments in the contempt proceeding. Ultimately, the district court held Innova’s new product was not “more than colorably different” from the original infringing product, the new product infringed the claim, and, consequently, Innova was in contempt of the permanent injunction.

The Federal Circuit agreed with the district court that the new product was not more than colorably different, but it held that the district court erred by not construing claim 3 of the patent. While the Federal Circuit has held that a district court “is bound by any prior claim construction that it had performed in the case,” here “there was no prior claim construction because Innova had conceded infringement.” Slip op. at 7 (emphasis added) (quoting Tivo Inc. v. Echostar Corp., 646 F.3d 869, 883 (Fed. Cir. 2011) (en banc)). The court then concluded that that were an insufficient record for it to construe the claim, so it vacated the injunction and remanded to determine the proper construction of the disputed claim.


Court Considers What Constitutes Publicly Available Prior Art and Attorney’s Diligence in Reduction to Practice

In re Enhanced Security Research, LLC, No. 2013-1114, 2014 U.S. App. LEXIS 586 (Fed. Cir. Jan. 13 2014) (Dyk, J.). Click here for a copy of the opinion.

Enhanced Security Research, LLC (ESR) appealed the Board of Patent Appeals and Interferences (Board) decision following an ex parte reexamination proceeding finding ESR’s patent invalid as obvious over a computer manual (Manual) in view of a research article.

The Federal Circuit affirmed the Board’s decision. During the reexamination, ESR argued against the obviousness rejection stating that the Manual was not publicly available prior art. The CEO of the company that produced the software associated with the Manual filed a Declaration stating that the Manual was available to members of the public showing an interest in buying or licensing the product. The Federal Circuit determined that the Manual was publicly available stating that “even relatively obscure documents qualify as prior art so long as the public has a means of accessing them.” Slip op. at 13. ESR also argued that the Manual could not be “considered as a whole” because it was missing pages. Id. at 14 (citing Panduit Corp. v. Dennison Manufacturing Co., 810 F.2d 1561, 1568 (Fed. Cir. 1987)). The Federal Circuit disagreed, stating that Panduit held that § 103 does not allow a court to “stitch together” an obviousness argument without considering the reference as a whole. Here, nothing suggested that the missing pages were necessary to understand the applicable parts of the Manual, so it could be considered and used to invalidate the claims. Id. at 15–16.

ESR also argued a prior date of invention, but the Federal Circuit affirmed the Board’s decision that ESR failed to demonstrate that its attorney “worked diligently and continuously” during the critical time period. Id. at 20–22 (citing Bey v. Kollonitsch, 806 F.2d 1024, 1026 (Fed. Cir. 1986). Bey stressed that the attorney’s records should “show the exact days when activity specific to the application occurred.” Id. at 1028. The Federal Circuit held that “[a]lthough § 1.131 did not require Saunders to work on Shipley’s patent application without pause . . . substantial evidence supports the Board’s finding that ESR failed to demonstrate the requisite attorney diligence.” Slip op. at 22.

In a dissenting opinion, Judge O’Malley argued that the PTO should have refused to rely on the incomplete Manual for at least the reason that ESR was denied access to a possible “teaching away” defense and that the Board should not have concluded that the Manual was publically available based on the omission of important details in the supporting Declaration.


PTO Miscalculated Patent Term Adjustment for Applications with Request for Continued Examination

Novartis AG v. Lee, No. 2013-1160, -1179, 2014 U.S. App. LEXIS 746 (Fed. Cir. Jan. 15 2014) (Taranto, J.). Click here for a copy of the opinion.

Novartis filed suit against the PTO challenging its determination of how much patent term adjustment (PTA) should have been added under the PTO’s interpretation of 35 U.S.C. § 154(b)(1)(B). That statute provides for additional patent term in certain situations where delays in examination cut into the twenty year term of a patent. The district court dismissed Novartis’s claims on summary judgment, holding that the no adjustment should be awarded following the filing of a request for continued examination.

The Federal Circuit reversed in part, holding that the PTO incorrectly applied the statute to calculate PTA for applications with a request for continued examination (RCE). The court rejected the PTO’s view that time between an allowance and issuance should be excluded from PTA under § 154(b)(1)(B)(i). The court reasoned that in a case not involving an RCE, “time from allowance to issuance undisputedly would count toward the PTO’s three-year allotment”; so, “[b]y the same token, allowance-to-issuance time is not to be distinguished according to whether there is continued examination in a prosecution.” Slip op. at 15. Accordingly, the court remanded to the district court to determine the proper PTA for the patents at issue.

The Author

Robert Schaffer & Joseph Robinson

Robert Schaffer & Joseph Robinson  

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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