Delaware IP Law Blog

The Federal Circuit has affirmed a decision by District of Delaware Chief Judge Gregory M. Sleet. Following a bench trial, the district court held that prosecution history estoppel barred the patentee from asserting the doctrine of equivalents as its infringement theory. The district court also rejected assertions of unforeseeability and tangentiality in the claim-narrowing process, both of which, if proved, would have precluded the estoppel finding.

In its affirming opinion, the CAFC agreed with the district court's conclusion that, on the issue of foreseeability, endorsing one of the parties' experts over the other "was not close." Quoting the Supreme Court, the appellate court reminded its readers of the discretion vested in trial judges:

[W]hen a trial judge's finding is based on his decision to credit the testimony of one of two or more witnesses, each of whom has told a coherent and facially plausible story that is not contradicted by extrinsic evidence, that finding, if not internally inconsistent, can virtually never be clear error. (Op. at 16)

This makes sense: It is the jurist that presides at trial, and not the appellate judge, that is the frontline decision maker. With the CAFC coming under fire in recent years for its alleged meddling with the work of the trial judges, this opinion, at least, demonstrates the value this circuit court places on credibility determinations - and the work of the district courts.

Honeywell Int'l Inc. v. Hamilton Sundstrand Corp., No. 2006-1602 (Fed. Cir. April 18, 2008) (Rader, J.).

Dependent claims necessarily refer back to an earlier, separate claim. But what happens when one claim describes a one-step process that is in turn obtained by the process of another claim? According to the Federal Circuit, the reference to the earlier claim's process ensures a finding of dependency.

In affirming a claim construction decision (among others) of Delaware District Judge Sue L. Robinson, the Federal Circuit began with the language of the process claim in issue: "A process comprising obtaining progeny from a [certain plant] obtained by the process of claim 1 . . . ."

Finding this language sufficient to warrant dependent status, the Court rejected the contention that the claim was independent because it is "by itself" a single-step process. By doing so, the Court relied on the claim's explicit reference to the independent claim's process:

"[C]laim 4 clearly references another claim, not simply a starting material. The claim might have used express language to clarify that it only invoked the product of the process in claim 1 as a starting material, but did not do so. Instead, the claim language reads claim 1 into claim 4."

Thus, the recitation of another claim's process, rather than its product, confers dependent status on the reciting claim.

Monsanto Co. v. Syngenta Seeds, Inc., No. 2006-1472 (Fed. Cir. Oct. 4, 2007) (Rader, J.).

The principle that the complete adjudication of a patent dispute requires that both liability and remedy be fully established is well-settled. If a court has entered judgment on one, but not the other, any appeal is likely premature. But what if a party that has sought injunctive relief in its complaint declines to brief the issue following a liability judgment and instead seeks an immediate appeal?

According to the Federal Circuit, the appeal remains premature. By granting a motion to dismiss an appeal from a District of Delaware jury's decision on infringement and invalidity, the appellate court characterized the unbriefed issue as an "unadjudicated request for injunctive relief" that "remains pending before the district court." Accordingly, it is a party's pre-judgment request, not its later abandonment, that controls the jurisdictional inquiry on appeal.

ACS Inc. v. Guidant Sales Corp., No. 2007-1365 (Fed. Cir. Aug. 1, 2007).

In re Seagate

The Federal Circuit dropped a bomb today with this unanimous decision. Here's the quick and dirty:

1) To prove willfulness, patentees now must show "objective recklessness. The Federal Circuit abandoned any affirmative duty of care on alleged infringers in relation to willfulness.

2) Waiver of the attorney-client privilege when asserting an opinion of counsel as a defense to a charge of willfulness does not, as a general rule, extend to trial counsel - although courts continue to have discretion as to waiver.

3) Waiver of work product immunity associated with the assertion of an opinion of counsel does not extend to trial counsel, unless there are exceptional circumstances.

Here in Delaware, this decision should bring uniformity to the waiver issues as to trial counsel, an issue that had received differing treatment in the past. We will keep and eye out for decisions applying this precedent in the coming months.

Claim construction follows a well trodden path through a patent's prosecution history, specification, and, most importantly, the language of the claims. Who knew that the process could also implicate the ongoing debate over the fairness and stability of the current patent regime?

Consider, for example, a recent dissent authored by Federal Circuit Senior Judge Plager in a case affirming District of Delaware Magistrate Judge Mary Pat Thynge:

"Fair notice to the public, and to competitors, of what is claimed depends on our holding patentees to what they claim, not to what they might have claimed. It is the responsibility of those who seek the benefits of the patent system to draft claims that are clear and understandable. When courts fail to enforce that responsibility in a meaningful way they inevitably contribute an additional element of indeterminacy to the system. Sometimes being kind to a party results in being unkind to the larger interests of the society."

Honewell Int'l Inc. v. Universal Avionics Sys. Corp., No. 2006-1406 (Fed. Cir. July 3, 2007).

On Monday, the Federal Circuit affirmed a decision of former Delaware district judge Kent A. Jordan that granted summary judgment of noninfringment and invalidity. After construing the claims of Plaintiff Microstrategy's three software patents, the district court found that Business Objects did not infringe one and that the other two were invalid for indefiniteness and anticipation, respectively. The Federal Circuit agreed on all counts, holding that the district court properly relied on the summary of the invention and certain reexamination statements to bolster its noninfringement decision.

The Court also concurred on the invalidity decision, noting that because the district court could have interpreted a textual error in one of the patents in several ways, the patent was indefinite as a matter of law.

On anticipation, the Court rejected Microstrategy's argument that the district court improperly relied on a series of manuals as a single prior art reference:

"The recitation of the applicable law [in the summary judgment briefing] . . . does not prevent the waiver of an argument unless that recitation is accompanied by an explanation of how the law applies to the facts of the particular case. Not only did Microstrategy fail to provide such an explanation, but it also failed to challenge Business Objects' statement that the manuals relied upon 'constitute a single prior art disclosure.' " ( slip. op at 8 )

Because Microstrategy did not explicitly identify the issue of multiplicity at the summary judgment stage, it could not object to the district court's anticipation methodology on appeal.

Microstrategy Inc. v. Business Objects Americas, No. 2006-1320 (Fed. Cir. June 25, 2007).

Read the district court opinion: Microstrategy Inc. v. Business Objects Americas, C.A. No. 03-1124-KAJ (D. Del. Jan. 23, 2006) (Jordan, J.).

In its first decision on obviousness since the Supreme Court handed down the KSR Int'l Co. v. Teleflex, Inc. decision, the Federal Circuit affirmed a District Court of Delaware decision finding Leapfrog's patent obvious in light of the prior art. Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. and Mattel, Inc. (Fed. Cir. May 9, 2007).

Leapfrog accused Fisher Price's Power Touch device of infringing its patent. After a full jury trial, the jury deadlocked and the case was submitted to the Court for its decision on infringement and invalidity. Judge Sleet wrote the District Court opinion finding Leapfrog's patent both not infringed and invalid. Leapfrog appealed both outcomes to the Federal Circuit.

The Federal Circuit affirmed J. Sleet's findings that the Leapfrog patent was both not infringed and invalid for obviousness. The Court noted that the approach to be taken in any obviousness analysis is one of common sense and not a rigid formula. "Any obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not." Id. at 7 (referring to the KSR opinion). In its application of this common sense approach to the facts-at-hand, the Federal Circuit found that the combination of two pieces of prior art would have been obvious to combine. Id. ("Accommodating a prior art mechanical device that accomplishes that goal to modern electronics would have been reasonably obvious to one of ordinary skill in designing children's learning devices."). This combination of art still left out the "reader" requirement of one of the claims, however, the Court also affirmed the District Court's finding that the addition of this reader also would have been obvious to one of skill in the and that Leapfrog presented "no evidence that the inclusion of a reader in this type of device was uniquely challenging or difficult for one of ordinary skill in the art." Id. at 10 (again referring the KSR opinion). also affirmed the lower court finding of non-infringement.

Interestingly, at a recent forum in Sweden, Judge Randall Rader from the Federal Circuit noted that the decision in Leapfrog was actually written before the Supreme Court decision in KSR and "did not require one iota of change." See posting on Intellectual Asset Management Magazine (link here). This comment further fuels the fire of those proponents that KSR has not changed the obviousness standard but only clarified what has been used by the courts for years.

You will also find an interesting post and comments at www.patently-o.com.

<%media(20070508-Syngenta Fed cir case 5-4-07.pdf|Syngenta Seeds, Inc. v. Monsanto Co., No. 2006-1203 (Fed. Cir. May 3, 2007) (nonprecedential))%>

Syngenta brought a suit in the District of Delaware alleging that Monsanto infringed three of its patents relating to genetically-modified corn. The district court held two of the patents not infringed as a matter of law. As to the third patent, a jury found the asserted claims infringed but invalid as obvious and lacking an adequate written description. On appeal, the Federal Circuit affirmed Judge Robinson's finding of noninfringement of two patents and affirmed the jury's decision finding the third patent obviousness. The appeals court did not reach the issue of the written description's adequacy because they affirmed the jury's verdict on obviousness grounds.

Although this is a post-KSR decision involving obviousness, the appeals court did not address the teaching/suggestion/motivation test at issue in KSR. Instead, the court found that jury's verdict was supported by substantial evidence without discussing the proper obviousness test. As to Judge Robinson's finding of noninfringement of two of the patents in suit, the appeals court held that Syngenta had waived the theory of claim construction argued to the Federal Circuit by not raising that same construction at the trial court level. Op. at 11.

A reader posted an interesting comment on Patently-O today about the Federal Circuit's recent grant of an "emergency stay" of the permanent injunction that issued in the Vonage-Verizon litigation:

After all the bad press over refusing the stay in the Blackberry case and letting the Virginia judge force a greater than half billion dollar settlement over patents the PTO may now find unpatentable, the CAFC could not afford to put Vontage out of business, or Congress might have put them out of business.

For the entire entry, click here.

What would you do if you discovered that in prosecuting a patent application, your client failed to disclose a relevant piece of prior art during an earlier prosecution of a related application? One way to avoid the potential inequitable conduct is to fully disclose the art in the current application. But while making this disclosure, according to the Federal Circuit, take care not to misrepresent the prior art in the process.

In a recent opinion, the Federal Circuit affirmed former Delaware district judge Kent A. Jordan's finding of inequitable conduct under similar circumstances. After discovering the omission in the earlier prosecution, plaintiff's outside counsel sought to cure by submitting several declarations and supporting exhibits to the PTO. Unfortunately, one declarant stated that the system under consideration, involving automated financial trading under several so-called "new rules," did not encompass those rules. On finding that the system did in fact incorporate those rules, the district court entered a judgment of unenforceability due to inequitable conduct.

On appeal, the Federal Circuit noted the incongruity of plaintiff's "cure":

"The applicants submitted the declarations at issue in an apparent attempt to purge possible inequitable conduct in the '733 application and to disclose the Super System in the '526 application. Instead of being candid, Paul's declaration disingenuously states that the Super System did not include new rules."

The fact that the statement was made in a declaration assumed importance in both courts' intent-to-deceive analysis: "[T]he affirmative act of submitting an affidavit must be construed as being intended to be relied upon."

Perhaps what is most interesting is left untouched by the Court of Appeals: whether, had the declarant been truthful, the declarations and exhibits disclosing the prior art would eliminate the specter of inequitable conduct regardless of the conduct on the earlier, related application.

<%media(20070404-ESPEED1.pdf|eSpeed Inc. v. Brokertec USA LLC, C.A. No. 03-612-KAJ (Feb. 22, 2006) (Jordan, J.))%> [District Court Opinion]
<%media(20070404-ESPEED2.pdf|eSpeed Inc. v. Brokertec USA LLC, 2006-1385 (Fed. Cir. March 20, 2007))%> [Federal Circuit Opinion]

In a tersely worded order, the Federal Circuit has declined to entertain an interlocutory appeal from a decision of then-Delaware district judge Kent A. Jordan.

The case began when pharmaceutical giant Amgen Inc. filed suit against Ariad Pharmaceuticals Inc., seeking a declaratory judgment of noninfringement and invalidity. Faced with a motion to dismiss for lack of subject matter jurisdiction, the district court denied the motion, but certified the case for appeal.

Notwithstanding the district court's certification, the Federal Circuit summarily denied the application for permission to appeal. Although styled "nonprecedential," the appellate court's order raises the question whether it is willing to resolve apprehension-of-suit issues when a district court has, by denying a 12(b)(1) motion, retained control over the case.

<%media(20070108-amgen-ariad.pdf|Amgen Inc. v. ARIAD Pharma. Inc., Misc. No. 839 (Fed. Cir. Dec. 29, 2006).)%>

In a decision handed down today, the Federal Circuit has given Impax Laboratories another chance to prove to a Delaware judge that its ANDA application is not hampered by Aventis Pharmaceuticals's patent. The appellate court agreed that Impax had failed to prove inequitable conduct at trial, but found that one of two pieces of prior art may have enabled Aventis's riluzole compound, a drug used to treat ALS (Lou Gehrig's disease). According to the three-judge panel, the district court, by looking only to the effectiveness of the prior art's alleged teaching, failed to fully analyze the question of enablement.

The district court ceased its enablement analysis once it found that the reference, although disclosing riluzole, was only one of many disclosed compounds. Because it was not meaningfully discussed in the prior art, the district court concluded that it could not enable a person of ordinary skill in the art to recognize the value of using riluzole for treating ALS.

Rejecting that finding, the Federal Circuit held that "the effectiveness of the prior art is not relevant." Instead, the Court explained that:

The proper issue is whether the '940 patent is enabling in the sense that it describes the claimed invention sufficiently to enable a person of ordinary skill in the art to carry out the invention . . . . [T]he district court focused only on the former question [of efficacy].

<%media(20061120-Impax.pdf|Impax Labs. Inc. v. Aventis Pharma. Inc., 05-1313 (Fed. Cir. Nov. 20, 2006). )%> The Court therefore vacated the non-enablement finding and remanded for further inquiry into whether the prior art enables one of ordinary skill "to treat ALS with riluzole."