Composition for Treating HIV Was Obvious in Re Sastry 01-1094 on April 5 in an Opinion

Owner of Electrical Circuit Patent Estopped From Relying on Doctrine of Equivalents -- Pioneer Magnetics, Inc. v. Micro Linear Corp. 00-1012 - On June 2 in a "per curiam" opinion, the Federal Circuit reconsidered its decision in this case in light of the Supreme Court's 2002 decision in the Festo Corp. case. The Federal Circuit again decided that Pioneer Magnetics is estopped from asserting that its patent for a circuit providing a steady electrical current source was infringed under the doctrine of equivalents. First, the court determined that Pioneer's USPTO amendment adding a "switching analog multiplier circuit" narrowed the claims to avoid prior art. The court refused to consider a declaration by Pioneer's attorney that the narrowing was inadvertent. Second, the court decided Pioneer could not overcome the presumption that it surrendered the asserted equivalent - a non-switching circuit. Such a circuit was known in the art and its use would have been **foreseeable** at the time of the amendment.

Taq Polymerase Chain Reaction Patent May be Unenforceable for Inequitable Conduct -- Hoffmann-LaRoche, Inc. v. Promega Corp. 00-1372 -- On March 31 in an opinion by Judge Bryson, the Federal Circuit upheld the lower court on two of three grounds that Hoffmann-LaRoche committed inequitable conduct. The patent involves use of the "Taq" bacterium in the polymerase chain reaction, which generates copies of DNA. The Federal Circuit did not find clear error in holdings that the inventors (1) intentionally misrepresented they performed a procedure described in the specification they did not perform, and (2) intentionally misrepresented the comparative fidelity and template dependence of the claimed and prior art enzymes. The Federal Circuit remanded the case, however, for the lower court to address whether the misrepresentations were "sufficiently serious . . . to warrant the severe sanction of holding the patent unenforceable." Judge Newman dissented.

Owner of Packaging Patents Did Not Admit That Its Earlier Patent Was Prior Art --Riverwood International Corp. v. R.A. Jones & Co. 02-1030, -1154 -- On March 31 in an opinion by Judge Linn, the Federal Circuit overturned a ruling that Riverwood's packaging methods and machines were obvious. The Federal Circuit did not agree that because Riverwood listed its own earlier patent in information disclosure statements submitted to the USPTO, the earlier patent was prior art by "admission." The court said the doctrine that a reference can become prior art by admission is inapplicable when the subject matter at issue is the inventor's own work. Also, the fact that the earlier Riverwood patent names co-inventors not named in the patents at issue does not necessarily make the earlier patent a patent of "another" under Patent Act section 102 (e). The court remanded the case for a determination of whether the portions of the earlier patent relied on represent the work of the inventor named in the patents at issue.

Federal Circuit Upholds DC District Court Ruling That Mussel-Killing Method Not Patentable -- Mazzari v. Rogan 02-1269 -- On March 17 in an opinion by Chief Judge Mayer, the Federal Circuit upheld a summary judgment that Mazzari's claims are not patentable. After the USPTO rejected his 1992 application on a method for generating an acoustic wave to kill zebra mussels, Mazzari sued in the District of Columbia district court under Patent Act section 145 and both he and the USPTO introduced additional evidence. The Federal Circuit agreed the claims were anticipated by or obvious in view of prior art. Marazzi's witness who asserted lack of motivation to combine references was not an expert in the art. The case was decided according to the standard for reviewing a summary judgment, but the Federal Circuit noted that after the Supreme Court's Zurko decision, findings of fact in a section 145 case are reviewed under different standards depending on whether they were made by the USPTO or the district court.

Court Upholds USPTO Obviousness Rejection in Biotech Case Based on Four Prior Art References -- In re Berg 02-1120,-1160 -- On Feb. 20 in an opinion by Judge Bryson, the Federal Circuit upheld the USPTO obviousness rejections of two Berg patent applications. The applications claim genetically engineered forms of the naturally occurring protein collagen, which is a constituent of connective tissue in humans and other animals. The applications were rejected over combinations of three and four prior art references. The court found substantial evidence that the Carter reference would have provided motivation to one skilled in the art to combine the teachings of the references to obtain the claimed inventions. The court noted that USPTO examiners and administrative law judges are "persons of scientific competence" who are "informed by their scientific knowledge, as to the meaning of prior art references . . . ."

Court Upholds USPTO Obviousness Rejection of Application for Superalloy Patent -- In re Peterson 02-1129 -- On Jan. 8 in an opinion by Judge Lourie, the Federal Circuit upheld the USPTO's obviousness rejection of Peterson's application for a patent on a superalloy used in gas turbine engines. The court first agreed that Peterson's claimed invention, with a range of 1% to 3% rhenium and about 14% chromium, was PRIMA FACIE obvious because it was a narrower range within the prior art's 0% to 7% rhenium and 3% to 18% chromium. The court said, "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." Applying the substantial evidence standard, the court then agreed with the USPTO that Peterson FAILED TO REBUT the prima facie case of obviousness. Peterson failed to show an unexpected increase in alloy strength over the entire claimed range of 1% to 3% rhenium and failed to show the prior art taught away from the claimed invention.

Adequacy of Disclosure in Amgen EPO Patents With Broad Claims Upheld -- Amgen Inc. v. Hoescht Marion Roussel, Inc. 01-1191, -1218 - On Jan. 6 in a 67-page majority opinion by Judge Michel, the Federal Circuit explained its decision in an appeal of a very complex lower court ruling on validity, infringement, and enforceability of five Amgen patents relating to production of erythropoietin (EPO), a hormone that controls formation of red blood cells. Amgen's product is sold as Epogen. Defendants are HMR, now Aventis Pharmaceuticals, Inc., and Transkaryotic Therapies, Inc. The Federal Circuit upheld the lower court's claim construction and its decision that the claims comply with the written description and enablement requirements of Patent Act section 112. The majority distinguished the case from the 1997 University of California v. Lilly case and 1998 Gentry Gallery case. In dissenting on adequacy of disclosure, Judge Clevenger said the central issue was "whether Amgen's disclosure of ONE means of producing synthetic EPO in mammalian cells, namely exogenous DNA expression, entitles it to ALL EPO produced by mammalian cells in culture, or ALL cultured vertebrate cells that produce EPO." (Emphasis in original.) On a different issue, the Federal Circuit said while a non-enabled disclosure cannot be anticipatory prior art, prior disclosures are presumed to be enabled, and the burden is on the patent owner to show otherwise.

2002 Composition for Treating HIV Was Obvious -- In re Sastry 01-1094 -- On April 5 in an opinion by Judge Bryson, the Federal Circuit upheld a USPTO obviousness rejection of Sastry's application for a patent on a composition for treating and preventing HIV, which is the name given to a group of closely related viruses that cause AIDS. The Federal Circuit found substantial evidence to support the decision that the prior art provided a MOTIVATION to combine prior art peptides in order to obtain the composition claimed by Sastry. Indeed, the USPTO could have based its rejection on anticipation by one of the prior art references, but it was not error to base the rejection on obviousness.

Lower Court Erred in Interpreting Patent Claim for Portlight and Excluding Accused Infringing Device From Prior Art -- Beckson Marine, Inc. v. NFM, Inc. 01-1301, -1316 -- On May 30 in an opinion by Judge Rader, the Federal Circuit reviewed decisions on infringement and validity of Beckson's patent for a "portlight," which provides a window in the wall of a boat. The Federal Circuit concluded that because the lower court improperly narrowed the scope of the independent claim by importing limitations from the specification and dependent claims, it erred in finding no infringement. On the issue of validity, NFM produced evidence that its accused device predated the critical date of the Beckson patent. Because the NFM device could be evidence of obviousness even if under a proper claim interpretation it does not infringe and anticipate, the lower court erred in excluding it as prior art.

Court Vacates Obviousness Decision Because USPTO Failed to Explain Its Reasoning -- In re Lee 00-1158 -- In a Jan. 18 opinion by Judge Newman posted on its web site yesterday, the Federal Circuit vacated a USPTO decision that patent applicant Lee's invention would have been obvious. The invention is a method for automatically displaying the functions of a video display device and demonstrating how to select and adjust the functions. The USPTO cited two prior art references but did not explain the evidence that would lead one skilled in the art to combine the references to obtain Lee's invention. The Federal Circuit said case law and the Administrative Procedure Act require the agency to make findings of fact and present its reasoning in sufficient detail to allow the court to conduct meaningful review. [The court noted without explanation a remarkable 5-year delay by the USPTO in responding to Lee's request for reconsideration

Court Agrees With USPTO Reasoning for Why One Would be Motivated to Combine Two References to Obtain Computer Invention -- In re Thrift 01-1445 -- On Aug. 9 in an opinion by Judge Dyk, the Federal Circuit reviewed a USPTO obviousness rejection of Texas Instrument Inc.'s patent claims for a system that allows users to access information on a computer network by using voice commands. All claims were rejected as obvious because of the combined teachings of two prior art references. In upholding the rejection of a first group of claims, the Federal Circuit commended the USPTO for articulating its reasoning for why one would be **motivated** to combine the two references, as required by the court in In re Lee. The motivation to combine in the present case was the need for a more user friendly input method than a mouse or keyboard. The rejection of a second group of claims was overturned because the Board decision was not supported by substantial evidence and the court refused to consider a defense raised by the USPTO Solicitor but not relied on by the Board.

Court Finds Motivation to Combine Prior Art References and Upholds USPTO Obviousness Rejection -- In re Huston 02-1048 -- On Oct. 17 in an opinion by Judge Dyk, the Federal Circuit reviewed a decision by the USPTO rejecting Huston's patent claims as obvious. The invention is a system for displaying an advertising message to a golfer on a screen based on the golfer's current position as determined by a global positioning satellite ("GPS") system. The court upheld obviousness rejections based on combinations of several prior art references. Judge Prost, dissenting, would have remanded the case for the USPTO to set forth its reasons why one skilled in the art would have been motivated to combine the references. In its footnote 9, responding to Judge Prost, the majority said it found motivation to combine the references in a further reference of record not quoted by the USPTO.

Federal Circuit Upholds USPTO Rejection of Patent Claim for Sports Boat Based on Definition of Claim Language in Specification -- In re Bass 02-1046 -- On Dec. 17 in an opinion by Chief Judge Mayer, the Federal Circuit upheld a decision by the USPTO during reexamination rejecting Bass's patent claims for a sports boat on the ground of obviousness. Bass argued that the prior art reference did not disclose a "low profile, motorized sports boat." The Federal Circuit said the USPTO "must apply the broadest reasonable meaning to the claim language, taking into account any definition presented in the specification." The court concluded, "Bass chose to define 'motorized sports boat' in the specification. He cannot change or modify that definition on appeal."

Chemical Patent Owner Disclaimed Preferred Embodiment of Invention by Amending Claims in USPTO -- Rheox, Inc. v. Entact, Inc. 01-1001 - On Jan. 8 in an opinion by Judge Gajarsa, the Federal Circuit upheld a summary judgment of no patent infringement in a case that turned on claim interpretation. Rehox's patent is for a method using calcium orthophosphate to treat lead- contaminated soil. Even though the ordinary meaning of the term "calcium orthophosphate" apparently encompasses monocalcium orthophosphate and TSP, the Federal Circuit agreed that Rehox disclaimed coverage for those chemicals in the USPTO by deleting explicit references to those chemicals from the claims in response to a USPTO prior art rejection. The court was not persuaded by the fact that TSP is described as the preferred embodiment, or that the patent's written description, drafted before the claims were amended, defined TSP as calcium orthophosphate.

Court Upholds Preliminary Injunction Against Infringement of Floor Panel Patent -- Tate Access Floors, Inc. v. Interface Architectural Resources, Inc. 01-1275 -- On Feb. 7 in an opinion by Judge Gajarsa, the Federal Circuit upheld a preliminary injunction to stop Interface from making floor panels covered by Tate's patent. The patent is for panels for elevated floors with a space underneath through which wires can be routed. In deciding that the lower court did not abuse its discretion by finding Tate showed a reasonable likelihood of proving infringement, the Federal Circuit refused to consider a "practicing the prior art" defense to literal infringement raised by Interface. The test for infringement, the Federal Circuit said, is "whether each and every limitation of a claim is present, either literally or equivalently, in the accused device."

Processes for Growing and Eating Certain Sprouts to Reduce Level of Carcinogens Anticipated by Disclosure of Growing and Eating Those Sprouts -- In re Cruciferous Sprout Litigation 02-1031 -- On Aug. 21 in an opinion by Judge Prost, the Federal Circuit upheld a decision that patents owned by Johns Hopkins University and licensed to Brassica Protection Products, Inc. are invalid for anticipation by the prior art. The patents are for methods of growing and eating certain sprouts to reduce the level of carcinogens in animals, thereby reducing the risk of developing cancer. Prior art references disclose growing and eating those specific sprouts. The Federal Circuit cited authority for the rule that, "a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it." The court said, "While Brassica may have recognized something quite interesting about those sprouts, it simply has not invented anything new."

3M Patent for Encapsulant To Protect Cables Not Anticipated by Prior Art --Minnesota Mining & Manufacturing Co. v. Cemque, Inc. 00-1429, -1517 - On Aug. 30 in an opinion by Judge Gajarsa, the Federal Circuit reviewed whether the prior art "anticipated" 3M's patent for an encapsulant used to protect electrical and optical cables. The court considered prior public knowledge, prior public use, and prior sale, under sections 102 (a) or (b) of the Patent Act, and found no substantial evidence to support the jury's verdict that a product known as Ricoseal anticipated the patent on any of the grounds. Chief Judge Mayer dissented. Other issues included judicial estoppel, claim construction, and inducement to infringe.

Split Federal Circuit Decides Patented Transgenic Mouse Was Not "Inherent" in Prior Art Disclosure -- Elan Pharmaceuticals, Inc. v. Mayo Foundation for Medical Education & Research 00-1467 -- On Aug. 30 in an opinion by Judge Newman, the Federal Circuit overturned a summary judgment that Elan patents for a transgenic mouse having a detectable amount of AFT- betaAPP, which is connected with Alzheimer's disease, were anticipated by the prior art. The majority decided that earlier Mullan patent did not teach more than known procedures for making a transgenic mouse, and that the Mullan disclosure was "simply an invitation to experiment, with no assurance of success." Mullan did not make the mouse. Judge Dyk, dissenting, said the majority contradicted Federal Circuit case law, including the recent Cruciferious Sprout Litigation, because the presence of AFT-betaAPP would have been "inherent" in a mouse made by the Mullan procedure.

Broader Claim Added After Patent Filing to Inhibit Potato Sprouts Invalid for Lack of Support in Written Description -- PIN/NIP, Inc. v. Platte Chemical Co. 02-1056 -- On Sept. 4 in an opinion by Judge Lourie, the Federal Circuit, reversing the lower court, decided that a Platte claim for a method of inhibiting sprout formation in potatoes during storage is invalid. The patent application as filed disclosed and claimed a method of applying a "composition" of two substances, each of which was known in the prior art to inhibit sprout formation. After the application was filed, Platte learned that PIN/NIP had publicly disclosed a method by which the two substances were applied separately in spaced, sequential applications months or days apart. Platte then added the claim at issue to protect steps of "applying" the two substances without claiming a composition, making the claim broad enough to cover spaced application. The Federal Circuit declared the claim invalid for lack of support in the original written description.

Federal Circuit Grants En Banc Rehearing in Transgenic Mouse Case Involving Issue of Inherent Disclosure in Prior Art -- Elan Pharmaceuticals, Inc. v. Mayo Foundation 00-1467 -- On Dec.18 the Federal Circuit vacated its three-judge panel decision of Aug. 30, 2002, and granted Mayo's petition for a rehearing en banc. The Aug. 30 panel decided Elan's transgenic mouse used in Alzheimer's research was not "inherent" in a prior art disclosure. Judge Dyk, dissenting from the Aug. 30 opinion, said, "This decision, if followed, will have serious and unfortunate consequences in the future by permitting the securing of patent rights to existing inventions so long as the patent applicant identifies an inherent characteristic of that product that was not identified in the prior art. That has never been our law." For IPO's summary of the Aug. 30 panel decision, go to www.ipo.org, Daily News, and use your browser to search for "Elan."

Attorney Did Not Intend to Deceive USPTO by Not Obtaining Full Translation of Prior Art Cited by Japanese Patent Office -- LPN Engineering Plastics, Inc. v. Miller Waste Mills, Inc. 00-1501,-1563 - On Dec. 21 in an opinion by Judge Rader, the Federal Circuit upheld most of the rulings made by Judge Roderick McKelvie of Delaware in a suit that has had three jury trials. LPN is suing for infringement of patents covering fiber-reinforced thermoplastics. The Federal Circuit upheld the judge's claim interpretation, concluding that the term "substantially completely wetted" was added as a "clarification" and not as an additional limitation. On an issue of inequitable conduct in the USPTO based on the prosecuting attorney obtaining only a partial translation of a prior art reference cited by the Japanese Patent Office that turned out to be material to patentability, the Federal Circuit deferred to a finding that the attorney did not intend to deceive. The Federal Circuit said the assessment of intent to deceive depended heavily on witness credibility and motive issues that cannot be reassessed on appeal.

No Range of Equivalents Available for Unamended Original Patent Claims Containing Same Limitation Added by Amendment to a Claim During Reexamination -- Intermatic Inc. v. Lamson & Sessions Co. 00-1101, -1116, 01-1028 - On Dec. 17 in an opinion by Judge Lourie, the Federal Circuit overturned a decision that Lamson infringed an Intermatic patent for an electrical outlet cover. During reexamination of the patent in the USPTO, Interactive amended a claim to add an "insert within the aperture" limitation to overcome prior art. Other claims in the original patent, which were never amended, already contained the "insert within the aperture" limitation. The Federal Circuit, applying the complete bar rule of the Festo case, held that no range of equivalents is available for that limitation in the amended claim or for the same limitation in unamended claims originally in the patent. The court said the estoppel created by the amendment applies retroactively to original unamended claims. Judge Newman dissented in part.

Patent Owner Disclaimed Broad Interpretation of Claims for Medical Device -- Ballard Medical Products v. Allegiance Healthcare Corp. 00-1393 - On Oct. 9 in an opinion by Judge Bryson, the Federal Circuit upheld a ruling of no infringement of Ballard patents for a catheter for a patient's breathing passages. The case turned on claim interpretation. The Federal Circuit agreed Ballard "disclaimed" a particular interpretation of its means-plus-function claims when it made statements about shortcomings of the prior art during USPTO prosecution. The Federal Circuit said it would disregard the lower court's inappropriate usage of the term "prosecution history estoppel," which is used when judging the doctrine of equivalents.

Semiconductor Fuse Patents Invalid for Claiming "Impossible" Way of Operating -- EMI Group North America, Inc. v. Cypress Semiconductor Corp. 00-1508 - On Sept. 21 in an opinion by Judge Rader, the Federal Circuit decided an appeal in EMI's suit for infringing patents on semiconductor chip fuses and a method for making them. The court decided the patents are invalid on alternative theories. It first upheld a ruling that the claims have an "impossible" or inoperable claim limitation, based on scientific evidence that the fuses do not operate by exploding as recited in the claims. The claims therefore are invalid under patent code section 112 and perhaps section 101. The court also ruled the claims are invalid for anticipation, because the prior art discloses the structure recited in the claims, although not the theory of operation.

Patented Steel Invention Found Obvious on Reexamination -- In re Inland Steel Co. 00-1143 - On Sept . 19 in an opinion by Judge Bryson, the Federal Circuit upheld a USPTO ruling on reexamination that Inland's method for producing steel with improved magnetic properties was obvious. The reexamination was requested by USX Corp. and LTV Steel Co. The Federal Circuit decided that the USPTO board interpreted the principal prior art reference correctly and that one skilled in the art would have been motivated to combine the references. In deciding whether the prima facie case of obviousness was overcome by evidence of unexpected results, the court said an examination for unexpected results "is a factual, evidentiary inquiry" and deferred to the board.

Split Federal Circuit Holds Y2K Patent Anticipated by Prior Art -- Brown v. 3M Co. 00-1552 - On Sept. 18 in an opinion by Judge Newman, the Federal Circuit upheld a summary judgment that Brown's patent is invalid for anticipation (i.e., lack of novelty). The patent is for a technique for reprogramming computers to avoid "Y2K" problems. The claim language in dispute requires conversion of data with years represented by "at least one of two-digit, three-digit, OR four-digit year-date representations." (Emphasis added.) The prior art discloses two-digit representations. The majority, citing the rule that a claim is anticipated if the prior art discloses any one of alternative structures in the claim, held the claim anticipated. Chief Judge Mayer, dissenting, read the claim to require capacity to convert two-digit, three-digit AND four-digit representations.

No Literal or Equivalents Infringement of Surfboard Patent -- Fin Control Systems Pty, Ltd. v. OAM, Inc. 00-1516 -- On Sept. 12 in an opinion by Judge Clevenger, the Federal Circuit upheld a summary judgment of no infringement of Fin Control's surfboard patent. By relying on a dictionary definition of the claim term "lateral," and on usage of that term in the prior art and by the USPTO examiner, the court construed the claim in a way that required a conclusion of no literal infringement. The court also ruled there could be no equivalents infringement. The opinion said equivalents infringement would require reading the limitations "lateral" and "side" out the claim, contrary to the rule of the court's 1997 Sage Products case.

Obtaining Full Translation of Prior Art Cited by Japanese Patent Office -- LPN Engineering Plastics, Inc. v. Miller Waste Mills, Inc. 00-1501,-1563 - On Dec. 21 in an opinion by Judge Rader, the Federal Circuit upheld most of the rulings made by Judge Roderick McKelvie of Delaware in a suit that has had three jury trials. LPN is suing for infringement of patents covering fiber-reinforced thermoplastics. The Federal Circuit upheld the judge's claim interpretation, concluding that the term "substantially completely wetted" was added as a "clarification" and not as an additional limitation. On an issue of inequitable conduct in the USPTO based on the prosecuting attorney obtaining only a partial translation of a prior art reference cited by the Japanese Patent Office that turned out to be material to patentability, the Federal Circuit deferred to a finding that the attorney did not intend to deceive. The Federal Circuit said the assessment of intent to deceive depended heavily on witness credibility and motive issues that cannot be reassessed on appeal.

Sofa Patent Unenforceable Because Information Was Withheld From USPTO -- GFI, Inc. v. Franklin Corp. 00-1268,-1288 -- On Sept . 7 in an opinion by Chief Judge Mayer, the Federal Circuit upheld a ruling that GFI's patent for a sofa with controls on a console between a pair of reclining seats is unenforceable because of inequitable conduct during prosecution in the USPTO. GFI had discussions with a rival inventor who also had made a sofa with console-mounted controls, and GFI saw a model of the rival inventor's sofa. GFI did not disclose this information to the USPTO. The lower court did not determine whether the withheld information was "prior art". Applying the abuse of discretion standard, the Federal Circuit approved the lower court's finding that the information was material and was withheld with intent to deceive. GFI, formerly known as the Gentry Gallery, Inc., also was a party in a frequently-cited 1998 in the Federal Circuit case involving the same patent.

Federal Circuit Reinstates Jury Verdict That "Roger Clemens Instructional Baseball" Invention is Not Obvious -- McGinley v. Franklin Sports, Inc. 00-1324 -- On Aug. 21 in an opinion by Judge Clevenger with Judge Michel dissenting, the Federal Circuit overturned a ruling that McGinley's patent is invalid for obviousness. The invention, sold as the "Roger Clemens Instructional Baseball," is a baseball with "finger placement indicia" for teaching students how to throw different types of pitches. The ruling appealed to the Federal Circuit was a trial judge's decision throwing out a jury verdict of no obviousness. The Federal Circuit majority analyzed two prior art references relied on by the trial judge and found insufficient motivation to combine references or modify one reference. Judge Michel in dissent criticized the practice of permitting general jury verdicts on obviousness, and said that in this case a designer "of even minimal skill in the art" would have found it "blatantly obvious" to modify the main prior art reference.

Court Upholds USPTO Decision That Snowboard Boot Invention Was Not Obvious -- Okajima v. Bourdeau 01-1090 -- On Aug. 16 in an opinion by Judge Michel, the Federal Circuit upheld a USPTO decision that it would not have been obvious to combine prior art features to obtain Bordeau's snowboard boot. The obviousness issue arose during an interference proceeding. Complimenting the USPTO on a thorough job of setting forth in its opinion the basis for its factual findings, the court found substantial evidence to support a conclusion of no motivation to combine the prior art features. "While it is always preferable for the factfinder below to specify the level of ordinary skill it has found to apply to the invention at issue . . . ," the court said, the absence of specific findings on the level of ordinary skill was not reversible error.

Monsanto Patent for Gene Making Plants Resistant to Insects is Invalid for Prior Invention by Another Company -- Monsanto Co. v. Mycogen Plant Science, Inc. 00-1002,-1003,-1050 -- On Aug. 16 in an opinion by Judge Linn, the Federal Circuit upheld a jury verdict that Monsanto's patent is invalid because of prior invention by others. Monsanto's patent is for an altered gene that increases the level of "Bt" protein in plants to make them resistant to insects. Scientists at Agracetus, Inc., a company that at the time was unrelated to either Monsanto or Mycogen, conceived the invention before Monsanto scientists. The Federal Circuit found substantial evidence that although Agracetus may have been second to reduce the invention to practice, Agracetus was diligent in reducing to practice as required by patent code section 102 (g) for the prior invention defense to apply.

After Supreme Court Remand Federal Circuit Still Disagrees With USPTO Rejection of Zurko Patent -- In re Zurko 96-1258 -- In an opinion by Senior Judge Archer on Aug. 2, the Federal Circuit again refused to uphold the USPTO's rejection of Zurko's patent claims. Zurko is seeking a patent for a method for more efficiently creating a secure computer environment. The Supreme Court ruled that the Federal Circuit applied an incorrect review standard. This time, applying the "substantial evidence" standard, the Federal Circuit held that the USPTO rejection based on prior art references is not supported by substantial evidence. The USPTO misread the two references it relied on, which do not disclose communication along a secure path. The USPTO's assessment that such a feature is "basic knowledge" or "common sense" is not substantial evidence, the court said.

Judge Newman Issues Unusual Dissent in Prozac ™ Double Patenting Case -- Eli Lilly & Co. v. Barr Laboratories, Inc. 99-1262,-1263,-1264,-1303 -- On May 30 the Federal Circuit acting en banc issued an order vacating the three-judge decision of August 9, 2000 and assigning the case to the same judges for a new opinion. Appended to the order is an opinion by Judge Newman, who was not one of the three judges. The order characterizes her opinion as a dissent from the refusal to reconsider the case en banc, but in substance it is a dissent from the new opinion of the three-judge panel. According to Newman, the panel should not have applied the judge-made double patenting doctrine, because the disclosure of a predecessor to the Lilly '549 patent was available as prior art against the 'Lilly '213 patent, filed nine years later. Newman said that when the application for the '213 patent was examined by the USPTO, it was determined that the '213 invention was not obvious over the '549 disclosure.

One of Two Semiconductor Patents Valid and Infringed -- Electro Scientific Industries, Inc. v. General Scanning Inc. 99-1523,-1535 -- On April 18 the Federal Circuit upheld a damage award of $13.7 million for infringing one ESI semiconductor patent and upheld a decision that a second one is invalid. The patents are for laser systems for severing, or "cutting," defective memory cells in chips after manufacture. On an issue of anticipation with respect to the patent that was upheld, the Federal Circuit agreed General Scanning failed to show a prior art invention was inherently capable of cutting defective cells. Other issues included obviousness, amount of damages, enhanced damages, attorney fees, and calculation of prejudgment interest.

Because Earlier Patent Taught Away From Design, Ornamental Design of Pre-recorded Disk Not Obvious -- In re Tsutomu Haruna 00-1283 -- On April 18 the Federal Circuit reversed a USPTO decision that would have denied a design patent to Haruna for an ornamental design for a pre-recorded optical disk. Haruna's disk differs from conventional disks in that the metallized region of Haruna's disk stops well short of the outer rim and the disk has a relatively wide transparent region adjacent the outer rim. The USPTO rejected Haruna's application as rendered obvious by an earlier utility patent disclosing a relatively wide outer region that is not transparent. The Federal Circuit concluded the earlier utility patent teaches away from Haruna's design because the utility patent discloses a reason for using a non-transparent outer region -- to conceal cosmetic defects. The court concluded the USPTO failed to apply the ultimate test for obviousness of a design patent: ". . . whether the overall appearance and visual effect of the claimed design is obvious in view of the prior art."

Two Golf Iron Patents Not Infringed and a Third Invalid in Part -- Karsten Mfg.Corp.v.Cleveland Golf Co. 99-1234 -- On March 22 the Federal Circuit largely upheld a decision of the lower court in Karsten's suit for infringement of three patents for iron-type golf clubs. The Federal Circuit agreed Cleveland did not infringe two patents. Infringement depended in part on claim interpretation. Among other issues, the claim language "correlated set of iron-type golf clubs" was interpreted to require each club in a set sold together to embody the claimed features. Because of prosecution history of certain claim limitations in the USPTO, the doctrine of equivalents was not available with respect to those limitations. Invalidity in light of the prior art was the issue for the third patent. The Federal Circuit agreed certain claims were anticipated by a Wilson 1200 club that was not cited by the USPTO, but overruled a decision of obviousness of other claims because there was no motivation to combine components of two prior art irons.

Amazon.com's Patented "One-Click" Invention May Be Old or Obvious -- Amazon.com, Inc. v. barnesandnoble.com, inc. 00-1109 -- On Feb. 14 the Federal Circuit vacated a lower court preliminary injunction against Barnes & Noble's "Express Lane" website ordering system, which Amazon claims infringes its "One-Click" or "single action" ordering system, in which an item is ordered without using the "shopping cart" ordering model. When the suit was filed in the fall of 1999, it became the focus of media attention in connection with a public debate over so-called business method patents. The question addressed in the Feb. 14 opinion is whether Amazon has demonstrated the reasonable likelihood of success on the merits necessary for a preliminary injunction. The Federal Circuit examined a mid-1990's "CompuServe Trend System" and four other prior art items cited by Barnes & Noble as evidence the patent is invalid for anticipation or obviousness. The Federal Circuit concluded the lower court erred by misreading the content of the prior art, and that Barnes & Noble has raised "substantial questions" as to the validity of the patent, making a preliminary injunction inappropriate.

No Equivalents Infringement Despite Patent Owner's Argument Amendment Was Inadvertent and Unnecessary -- Pioneer Magnetics, Inc. v. Micro Linear Corp. 00-1012 -- On Jan. 23 the Federal Circuit upheld a summary judgment of no infringement of Pioneer’s patent for a device for providing a steady electrical current. The case turned on whether an amendment to claim 1 limiting a "multiplier" to a "switching . . . multiplier" precluded infringement under the doctrine of equivalents The Federal held the amendment was not inadvertent, but said even if it was inadvertent the doctrine of equivalents would be unavailable. The court also rejected an argument that the amendment was unnecessary because the USPTO made no prior art rejection against a dependent claim later incorporated into claim 1 that had the "switching" limitation. The court said the amendment, which incorporated into claim 1 both a "modulator" limitation from a first dependent claim and the "switching" limitation from a claim dependent on that claim, with neither dependent claim rejected over prior art, was "responsive" to the USPTO’s rejection.

Paper-Stacking Patent Could Not Be Expanded to Cover Technology Already in the Prior Art -- Marquip, Inc. v. Fosber America, Inc. 99-1025,-1120 -- On Dec. 6 the Federal Circuit upheld a summary judgment that Fosber did not infringe Marquip's patent claims for stacking corrugated paperboard sheets without interrupting the continuous flow of sheets. To determine infringement, the Federal Circuit followed the hypothetical claim analysis first used its 1990 opinion in the **Wilson Sporting Goods** case. A hypothetical claim covering Fosber's accused device could not have been obtained from the Patent and Trademark Office because it would have covered technology -- an interrupt mechanism and changing conveyor speeds -- already in the prior art at the time of Marquip's invention. Therefore Marquip's claims could not be expanded under the doctrine of equivalents to cover Fosber's device. Prosecution History in USPTO Limits Coverage of Water Cooler Patent -- Elkay Mfg. Co. v. Ebco Mfg. Co. 98-1596,99-1276 -- On Sept. 15 the Federal Circuit, reversing the lower court, decided Ebco did not infringe Elkay's patent for a water cooler adapter that permits an inverted jug to be placed on the cooler with the cap still on the jug. Elkay's claim calls for "an upstanding feed tube." The accused device uses two concentric tubes with water flowing down the inner tube and air flowing up the other passage. In construing the claim, the Federal Circuit looked to prosecution history in the USPTO. By making an argument to distinguish over prior art, the Federal Circuit decided, Elkay gave up an interpretation of its claim that would cover separate paths for liquid and air.

Drug Patent Not Infringed Because Equivalent Drug Surrendered During USPTO Prosecution -- Merck & Co., Inc. v. Mylan Pharmaceuticals, Inc. 99-1044 -- On Sept. 3 the Federal Circuit upheld a summary judgment that Mylan did not infringe Merck's patent for a drug combination used to treat Parkinson's disease. The court agreed that Merck was estopped to assert equivalents infringement because Merck surrendered the specific polymers used in Mylan's drug when Merck narrowed its claims during prosecution in the USPTO, in response to a rejection based on prior art. The court did not agree that Merck narrowed the claims in response to a requirement to restrict the patent to one invention.

Explosives Patent Invalid Because Feature of Invention Inherently Was Present in Prior Art -- Atlas Powder Co. v. IRECO Inc. 99-1041-- On Sept. 7 the Federal Circuit upheld a ruling that a patent for a blasting composition asserted by Atlas is anticipated by the prior art. The litigation has been underway for 13 years. The prior art expressly discloses every feature claimed in the patent except a requirement that "sufficient aeration is entrapped to enhance sensitivity to a substantial degree." Although the prior art does not recognize the need for sufficient aeration, and indeed one reference suggests removing air, IRECO presented testimony and documentary evidence that a composition with the specific ingredients and proportions disclosed **inherently** contains sufficient aeration.

Court Invites Comments on Prosecution History Estoppel and Equivalents -- Festo Corp. v. Shoketsu Kinzoku Koygo Kabushiki Co. 95-1066 -- On August 20 the Federal Circuit vacated its decision (see IPO Daily News of May 4) and granted Shoketsu's petition to rehear the appeal en banc. The court invited briefs by the parties and amicus curiae on five questions relating to prosecution history estoppel and the doctrine of equivalents after the Supreme Court's Warner- Jenkinson opinion: (1) In determining whether an amendment to a claim creates estoppel, is "a substantial reason related to patentability" limited to those amendments made to overcome prior art? (2) Should a "voluntary" claim amendment create estoppel? (3) If an amendment creates estoppel, what range of equivalents, if any, is available for the amended claim? (4) When no explanation for an amendment is established, thereby invoking the presumption of estoppel, what range of equivalents, if any, is available for the amended claim? (5) Would a judgement of infringement in the Festo case violate the prohibition against applying the doctrine of equivalents so broadly "as to eliminate [an] element in its entirety"?

Claim for Wrist Watch Misconstrued in Attempt to Sustain Validity of Claim -- Rhine v. Casio, Inc. 98-1432 -- On July 6 the Federal Circuit reversed a finding of no infringement of Rhine's claim for a wrist watch containing a flashlight. In an apparent effort to construe the claim narrowly to sustain its validity in view of prior art, the lower court said the claim required two light sources. The Federal Circuit rule the construction was contrary to the plain language of the claim, and remanded for an analysis of validity of the claim. The Federal Circuit said, "If the only clam construction that is consistent with the claim's language and the written description renders the claim invalid, then the axiom [that claims should be construed to sustain their validity] does not apply."

Sony Did Not Infringe Charge-Coupled Device Patents -- Loral Fairchild Corp. v. Sony Corp. 97-1017 -- On June 8 the Federal Circuit upheld a judgment that Sony did not infringe Loral semiconductor patents relating to "charge-coupled devices," used to store images in camcorders, copiers, and fax machines. Loral's process requires steps to be performed in a particular sequence. Sony performed the steps in a different sequence. In the PTO, Loral limited its claim to a sequence in response to prior art, and not solely to correct drafting errors as argued by Loral, so prosecution history ruled out equivalents infringement. Neither was a Loral product patent infringed under the doctrine of equivalents, because Sony's device lacked an element for each element in the claim as required by the "all-elements" rule.

Prosecution History in USPTO Rules Out Equivalents Infringement of Medical Device Patents - - Augustine Medical Inc. v. Gaymar Industries, Inc. 98-1001,-1002,-1054, -1244,-1266 -- On June 8 the Federal Circuit reversed a lower court holding that Gaymar infringed Augustine's patents for forced-air thermal blankets which are used during and after surgery to prevent or treat hypothermia caused by surgical conditions. The Federal Circuit decided prosecution history bars Augustine from relying on the doctrine of equivalents to extend the scope of its claims beyond "self- erecting" blankets. In the USPTO, Augustine argued that its self-erecting feature is the primary advantage over the prior art. Among other things, the Federal Circuit rejected Augustine's argument that it is entitled to a broad range of equivalents because its inventions are "pioneering." The court said pioneers "enjoy the benefits of their contribution to the art in the form of broader claims.

Nintendo's Video Game Systems Do Not Infringe GE's TV Patents -- General Electric Co. v. Nintendo Co. 98-1089 -- On June 2 the Federal Circuit upheld a summary judgment of no infringement of three GE patents for control circuitry used with television systems and reversed a summary judgment of invalidity of one patent. The accused infringing devices are world famous video game systems: the Nintendo Entertainment System, the Super Nintendo Entertainment System, and the Gameboy. The Federal Circuit addressed a potpourri of infringement issues, including interpretation of means-plus-function claims, doctrine of equivalents, and whether "bit mapping" language in the preamble is a limitation of a claim. The lower court's error in finding patent invalidity was that one claim limitation is not disclosed in the prior art reference and the lower court ruled only on anticipation, not obviousness.

USPTO Made No Findings of Fact to Show Jack-O'-Lantern Trash Bag was Obvious -- In re Dembiczak 98-1498 -- On April 28 the Federal Circuit disagreed with the USPTO's refusal to grant a patent to Dembiczak on an orange plastic trash bag decorated with lines and facial features that cause the bag, when filled, to resemble a jack-o'-lantern. The court overturned the obviousness rejection of the application, for a utility patent, because the USPTO Board made no findings of fact regarding **motivation** to combine the prior art references to obtain Dembiczak's trash bag. The court declined to consider an analysis of the prior art presented in court by the USPTO Solicitor, calling it a "new analysis, apparently cut from whole cloth in view of appeal." Applying the "two- way" test, the Federal Circuit also overturned a double-patenting rejection based on Dembiczak's design patents, because the design patents were not obvious variants of the utility claims.

President and Sole Stockholder Who Was Responsible for Inequitable Conduct Added to Suit After Judgment -- Ohio Cellular Products Corp. v. Adams USA, Inc. 97-1448 -- On April 23 the Federal Circuit upheld a decision to allow Adams USA to add Donald Nelson as a defendant against whom the judgment was collectable after the lower court awarded attorney fees to Adams USA. Nelson, the president and sole stockholder of Ohio Cellular, was judged to have been personally responsible for intentionally withholding material prior art from the USPTO. After the lower court decided Ohio Cellular was liable for attorney fees and the parties attempted to negotiate the amount of liability, Ohio Cellular's counsel wrote a letter threatening to liquidate Ohio Cellular. The Federal Circuit, with Judge Newman dissenting, decided the lower court did not abuse its discretion.

Hypothetical Patent Claim That at the Same Time Broadened and Narrowed Actual Claim Could Not be Used to Show Infringement -- Streamfeeder, LLC v. Sure-Feed, Inc. 98-1521 -- On April 20 the Federal Circuit found no infringement of Streamfeeder's patent for a "bottom sheet feeder" for feeding paper into office equipment. To determine infringement under the doctrine of equivalents, the lower court employed the "hypothetical claim" analysis first used by the Federal Circuit in the Wilson Sporting Goods case. If a hypothetical claim broad enough to read literally on an accused device could have been allowed by the PTO, then infringement may exist. However, the Federal Circuit decided the hypothetical claim proposed by Streamfeeder was impermissible. Although it was broader than the actual claim in one respect, it had to be written narrower in another respect in order to avoid the prior art. The Federal Circuit said, "Hypothetical claim analysis . . . cannot be used to redraft granted claims in litigation by narrowing and broadening a claim at the same time."

New Feature of P&G's Disposable Diaper Not "Inherent" in Earlier Diaper -- In re Robertson 98-1270 -- On Feb. 25 the Federal Circuit reversed the USPTO's decision rejecting Procter & Gamble's patent claim for a disposable diaper. The P&G claim is for a diaper with two fasteners for attaching it to the baby and a third fastener for securing the rolled-up, soiled diaper for disposal. The USPTO held P&G's claim anticipated under 35 U.S.C. 102 based on "principles of inherency," reasoning that an earlier diaper was "inherently capable" of having a separate fastener for disposal. The Federal Circuit said an element is "inherent" in the prior art only if extrinsic evidence makes clear that the element is "necessarily" present. An inherency rejection cannot rest on "probability or possibility."

Patent Toppled by Inventor's "Smoking Gun" Memo Concerning Prior Patent Not Cited to USPTO-- Elk Corp. of Dallas v. GAF Building Materials Corp. 98-1369 -- On Feb. 11 the Federal Circuit upheld a ruling that Elk's design patent for roofing shingles with striations of shading is unenforceable because of inequitable conduct by Elk in prosecution before the USPTO. A letter by one of the inventors and a memo by that inventor that was forwarded to the patent attorney said two earlier patents were of special importance, but those patents were not cited to the USPTO. The Federal Circuit concluded differences between the uncited patents and cited patents supported the lower court's finding of materiality of the uncited patents. Intent to mislead the USPTO was inferred from the circumstances.