Posts Tagged: "Chief Judge Sharon Prost"

Claim differentiation does not broaden claims beyond their meaning in light of the patent as a whole, and cannot override clear statements of claim scope found the specification and prosecution history… Disavowal can occur when the specification plainly describes “the present invention” as having that feature. Here, the specification states that an important characteristic of the present invention is a “reduction in upper width … resulting from the extended short seals.” Disavowal can also occur when the specification distinguishes or disparages prior art based on a specified feature. The specification did that here, by stating that prior art bags are difficult to secure over trash receptacle lips and explaining how the described short seals solve this problem.

The Court found substantial evidence to support the jury’s finding of infringement. While Samsung’s expert offered conflicting testimony, a reasonable jury could have credited Apple’s expert. Thus, there was no error in the district court’s conclusion that substantial evidence supported the jury verdict of infringement… Note that the underlying dispute in this case does not concern design patents that were also asserted against Samsung, and which are currently being reviewed by the Supreme Court.

In vacating the district court’s summary judgment order, the Federal Circuit noted first that statements made by Micron’s expert regarding what the anticipatory reference disclosed were not actually supported by the anticipatory reference itself… These kinds of procedural safeguards are commonly applied by other regional circuits, but have seemed to be missing from Federal Circuit case law of late, with the Federal Circuit seeming to be rather eager to address the substance of a given dispute. Perhaps with the overwhelming caseload now at the Federal Circuit, and its need to resort to both Rule 36 and non-precedential opinions, the court seems to finally be coming to terms with the fact that it is an appeals court and not a court of first instance that should always decide cases de novo.

This decision reestablishes what should always have been the case; namely that the Federal Circuit is an appellate court that does not consider evidence outside the record or engage in fact finding on their own. The Federal Circuit has been increasingly out of control for years, acting as a trial court and jury rather than an appellate court. Hopefully that will end today.

The Federal Circuit Court found that the source of the purported indefiniteness (“processing system”) played no role in defining the claims. Since the asserted claims are method claims, patentability resides with the method steps and not with the machines performing those steps.

Affinity Labs of Texas, LLC, lost two cases at the Federal Circuit last week, both in decisions authored by Judge Bryson, which Chief Judge Prost and Judge Wallach joining the opinions. Although the patents at issue in the two cases were different, they shared a similar specification. In the DirecTV decision, the Federal Circuit followed the Alice/Mayo framework and found the claims patent ineligible. Perhaps of note, the Court rebuffed Affinity’s arguments regarding novelty, explaining patent eligibility does not turn on novelty of the claims. In the Amazon decision the Federal Circuit ruled that basic user customization is insufficient to qualify as inventive under Mayo and Alice.

Lifenet’s patent is for plasticized soft tissue grafts used for transplantation in humans. The specification discloses that plasticizers can be removed before implantation, although they need not be, as claim 1 discloses three options for the implanting technician, one option being direct implantation without removing plasticizers. LifeCell’s accused grafts are preserved in a solution prior to implantation, and it is undisputed that significant amounts of plasticizers are removed during this soaking process. During claim construction, the parties disputed the meaning of the term “non-removal.” The district court concluded that construction of this term was unnecessary because it was easily understood by a person of ordinary skill in the art to have its plain meaning.

Stryker Corporation was awarded $70 million in lost profits after a jury found that Stryker’s patents were valid and willfully infringed by Zimmer. The district court affirmed the jury’s verdict, awarded Stryker treble damages for willful infringement, and awarded Stryker attorney’s fees. Stryker’s patents concerned portable, battery-powered, and handheld pulsed lavage devices used in orthopedic procedures to deliver pressurized irrigation for medical therapies, including cleaning wounds.

GPNE sued Apple for direct infringement of claims in two of GPNE’s patents. The patents at issue relate to a two-way paging system, where the paging devices are capable of not only receiving messages but also sending messages back in response. The claims asserted by GPNE all recited “nodes” rather than “pagers,” even though the word “node” was not used anywhere other than in the Abstract of the two patents containing the asserted claims. Seizing on this, Apple argued at the Markman hearing that a “node” as claimed should be construed as being a “pager.” The district court ultimately agreed with Apple, and ultimately so too did the Federal Circuit.

The Court noted that all of Warsaw’s arguments related to the Board’s findings of fact, and were therefore reviewed for “substantial evidence.” The Board’s reconciliation of the potentially conflicting descriptions in the reference amounted to a re-weighing of evidence, which is not permitted under the standard of review. The Court also affirmed the Board’s motivation to combine analysis. Finally the Court summarily rejected Warsaw’s arguments presented for the first time on appeal.

In large part, the CAFC was concerned with the possible disruption of overturning long-standing PTO practice and the reliance placed on it by practitioners, and this respect and concern for practice is to the court’s credit. And to its credit, the CAFC said as much: the “Supreme Court has long recognized that a ‘longstanding administrative construction,’ at least one on which reliance has been placed, ‘provides a powerful reason for interpreting a statute to support the construc­tion…[h]ere, HTC’s position would disturb over 50 years of public and agency reliance on the permissibility of same-day continuations. We see no basis for denying the existence of a facially large disruptive effect were we now to repudiate the same-day-continuation policy.”

The Federal Circuit, with Chief Judge Prost writing for the majority, joined by Judge Moore and Judge Stoll, vacated and remanded the case after ruling that the ‘929 patent claims are not directed to a patent-ineligible concept. “This is very heartening since the Supreme Court denied cert in Sequenom,” said Bob Stoll, former Commissioner for Patents at the United States Patent and Trademark Office and current partner at Drinker Biddle in Washington, DC. “It is great to see the CAFC apply the Supreme Court decisions more narrowly, as intended by that Court, and provide some relief to innovators that will help them to attract funding to develop their inventions.”

The Court found that “fractionation” referred only to distillation-based techniques. The specification’s use of the term “fractionation” controlled even if the definition was idiosyncratic. By that standard, the Court found that “fractionation” did not encompass solubility-based techniques. The specification identified the limits of “conventional fractionation” which were only limits of “conventional distillation,” and no other fractionation techniques known in the art were mentioned. Therefore, the specification equated “conventional fractionation” and “conventional distillation.” More broadly, this demonstrated that the specification equated the terms “fractionation” and “distillation.” This finding was further supported by the repeated and consistent use of the term “fractionation” in discussion of processes to separate mixtures by distillation.

In a May 13, 2016 decision, the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision upholding an Examiner’s denial of registration based on a finding that the term CHURRASCOS was generic as used for a restaurant, because the word “refer[s] to beef or grilled meat more generally” and that the term “identifies a key characteristic or feature of the restaurant services, namely, the type of restaurant.”

The Federal Circuit held that it is not the case that a patent must spell out a claim element’s function, way, and result, for the doctrine of equivalents to apply. It looked to what the claim element’s function in the claimed composition is to one of skill in the art, which it held may be determined by looking at extrinsic evidence. The Court found no error in the district court’s finding of infringement under the doctrine of equivalents. In applying the two part test (constructing a hypothetical claim that covers the accused device and comparing that claim to the prior art), the district court correctly determined that the hypothetical claim properly included the disputed excipients, i.e. Glenmark’s excipient.