Federal Circuit Blog

Federal Circuit Oral Argument Summaries – September 2007

These are VERY ROUGH summaries of the cases argued to the Federal Circuit in September 2007.  I listen to the arguments in my car – often when I am distracted. So use these only for issue spotting, and listen to the MP3 yourself (and get copies of the briefs) if you want a 100% accurate story.

2007-1108 MAURICE MITCHELL INNOV V INTEL CORP (Rader Moore Yeakel) 09-04-07 (2 of 5 stars)

Another case where the prosecutor messed things up by using “means” limitations without thinking.  The relevant terms were “switch means,” and “means for causing….”  The issue on the “switch means” limitation was whether it was subject to 112/6 and then if so, what it corresponding structure (if any) was.  The issue on the second limitation was a failure to link the three functions in the limitation to any structure in the specification.  The appellant argues that the level of skill in the art should be high, and such a smart person could figure it out (Cf. Overhead Door.).  [Whenever someone’s main argument relates to what “one of ordinary skill in the art” would understand, with no connection to any evidence, there is a problem.]

2007-1093 PHARMA RESOURCES V ROXANE LABS (Michel Moore Cote) 09-05-07 (2 of 5 stars)

The patent covers a steroid for treating AIDS that is provided with a surfactant and is “stable.”  The district court agreed with the patentee that the term “stable” did not require stability for a particular period, but then apparently granted summary judgment of nonenablement because the specification said very little about the enormous number of surfactants that could/would be used.

2007-1133 DIGEO INC V AUDIBLE INC (Michel Moore Cote) 09-05-07 (3 of 5 stars)

This is a section 285 exceptional case appeal.  Audible won as a defendant and then sought additional discovery to show that Digeo did not conduct a competent pre-suit investigation.  The district court denied the discovery and relied on a declaration from Digeo.  I think the Audible attorney had a very good, relaxed, conversational style that more people should try to emulate.

      

2006-1633 SINORGCHEM V ITC (Newman Dyk Yeakel) 09-05-07  (3 of 5 stars)

This is a chemical case dealing with nitrobenzene, where the claims require that a certain item interfere with a reaction.  The issue is whether the ITC erred in adopting an express definition in the patent, but not including an “e.g.” clause that was in the definition.  The ITC reasoned that the example conflicted with a particular embodiment in the patent.  The definition, including the “e.g.” clauses, was even in quotes.  So the issue is whether, and when, plainly stated lexicography can be trumped. 

2006-1641 BIOVAIL LABS V ANCHEN PHARMA (Newman Dyk Yeakel) 09-05-07 (2 of 5 stars)

This appeal is from a summary judgment of noninfringement.  The claims require that a tablet be “free of stabilizer,” and the question seems to be whether the presence of something (HCL) that is nominally a stabilizer, but in an amount too small to stabilize, is “free of stabilizer.”  There was lots of discussion regarding whether this was a legal claim construction issue or, instead, a factual issue.  The discussion was also interesting because the court was looking at an ANDA description, and not an actual product.

2007-1097 ELBEX VIDEO V SENSORMATIC ELECTRON (Dyk Moore Cote) 09-06-07 (1 of 5 stars)

The panel was not thrilled with this case – noting that the parties’ briefs were like “ships that pass in the night” and questioning the appellant about characterizations of the accused system.  The patent relates to a security system that associates a break-in sensor with a camera, and allows an operator to control a particular camera (and not other cameras in the system) by sending commands using an address from the most recent sensor to trigger an alarm.  The district court granted summary judgment, and the issue seems to be a failure of proof, i.e., whether the appellant established that actual control signals are sent to the accused cameras.  There is a separate issue about whether an alleged error in the patent should be recognized and forgiven.

2006-1275 RESEARCH CORPORATION V MICROSOFT (Newman Friedman Rader) 09-06-07 (3 of 5 stars)

The district court found inequitable conduct based on failure to disclose certain test results to the examiner.  The panel seems to think the results did not really relate to the claimed invention, and tht they showed that a certain approach was not as good as other approaches, but not that the certain approach (which apparently was tied to the patent) was inferior   The panel questioned whether it had the power to reassign a case on remand (Judge Real had already found the inventors to not be credible).  The appellant also asserts error in a grant of summary judgment of noninfringement.

2007-1069 IN RE BENZER (Newman Friedman Rader) 09-06-07 (1 of 5 stars)

The invention relates to some sort of “input and output pad” (or something like that), and although the prior art labels its pad only as an “input” pad, it also shows current going to and coming from the pad – so the Board concluded that the claims were anticipated.  There was some discussion, which I did not understand, regarding the distinction between an anticipation rejection and a rejection because the claims as drafted are too broad (I thought they were the same thing).  Also, the appellant argued that the Solicitor had made a new argument in its brief, and that the appellant was prejudiced by not being able to introduce evidence to counter the argument.

2007-1154 INTL FLORA V DESERT WHALE (Rader Clevenger Dyk) 09-07-07 (2 of 5 stars)

This is a res judicata case, where the prior decision found a lack of standing in an TM opposition, and the current case involves a TM cancellation proceeding.  Judge Dyk was skeptical because the allegations for standing were the same both times – he also did not think a particular case supported the appellant.  Judge Clevenger also has a great colloquy with the appellant – classic style.

2007-1162 SYSTEMS DIVISION V TEKNEK (Michel Newman Moore) 09-07-07 (3 of 5 stars)

This case seems to have a huge back story.  APPARENTLY, there was prior litigation on patents, the defendant lost, and the principals of the defendant moved money out of the defendant while the suit was pending (and perhaps after the case was clearly going badly).  The patentees then brought a separate suit in California to get the money from the principals (who apparently are from Scottland).  The principals-appellants assert that there was no personal jurisdiction because the only harm in California was harm to he patentee, and all specifi personal jurisdiction cases have required harm to others in the forum (distinction w/o a difference?).  The panel wondered why fraudulent transfers were not affronts to the court and to the people of California.  The appellants also argued for forum non convience, but the panel questioned whether the issue was really just forum less convenient.

2006-1602 HONEYWELL INTL V HAMILTON SUNDSTRAN (Newman Rader Dyk) 09-07-07 (2 of 5 stars)

This is a Festo case.  The accused equivalent appeared to involve using the position of guide vanes on a jet engine to determine where in its operation the engine is, and then to control the engine with respect to surge control.  HS argued that the equivalent was foreseeable because people already knew that inlet vane position affected engine operation; Honeywell argued instead that the use of inlet vanes for control was not known.  Apart from the “foreseeability” issue, there was also a tangentiality issue, but I forget what it is because I listened to this one long ago.  (Hey, you aren’t paying for this.)

Federal Circuit Oral Argument Summaries – August 2007

These are VERY ROUGH summaries of the cases argued to the Federal Circuit in August 2007.  I listen to the arguments in my car – often when I am distriacted. So use these only for issue spotting, and listen to the MP3 yourself (and get copies of the briefs) if you want a 100% accurate story.

2006-1565  POSTX CORP V SECURE DATA (Newman Lourie Prost) 08-06-07 (2 of 5 stars)

The defendant previously won summary judgment of noninfringement and then sought an antitrust claim under PRE for sham litigation.  The question is whether lack of a prefiling investigation necessarily creates sham litigation even if it turns out (luckily for the patentee) the suit was reasonable.  In addition, the district court held that the Postx and its VC (or something like that) were not competitors, so there was no problem with them supposedly conspiring to file a sham lawsuit.

2007-1087  GP INDUSTRIES V ERAN INDUSTRIES (Newman Lourie Prost) 08-06-07

The district court enjoined the patentee from telling the defendant’s customers about their infringement.  The appellant argues that the court: (1) erred in not requiring that the assertions be objectively baseless; and (2) by shifting the burden to the patentee to prove that it would succeed on its claims.  There was some discussion about the standard of review for objective baselessness, where the standard at the district court was a “likelihood of success on the merits.”  Judge Lourie asks what the harm is when the patentee could always sue the customers, and the appellant gives a reasonable answer.  The defendant was a company started by former employees of the plaintiff, and the letters to customers alleged many wrongs including RICO violations.  There were also some questions about what the injunction prohibited.

2007-1116  FOREMOST IN PACKAGING V COLD CHAIN (Rader Schall Linn) 08-06-07 (1 of 5 stars)

This is an appeal from summary judgment of noninfringement relating to some sort of package.  The argument was all very fact specific and I could not understand it.  Lot of discussion about the geometry of a “product cavity.”

2006-1583  DOLBY LABS V LUCENT TECHNOLOGIES (Rader Schall Linn) 08-06-07 (2 of 5 stars)

This is an appeal by patentee Lucent from a Rule 11 sanction – Lucent asserts that the defendant’s marketing literature said the products include the accused feature (Dolby AC-3 technology), but it appears that Lucent might have waited too long after receiving relevant depositions before dismissing its claims.

2006-1579  SAMSUNG ELECTRONICS V RAMBUS (Rader Schall Farnan) 08-07-07 (2 of 5 stars)

This case warms the heart of an appellate geek like me because Rambus was appealing to establish that it had no right to appeal.  Specifically, the district court had made some very unfavorable findings but had ultimately refused to impose fees against Rambus, and Rambus wanted to establish that those findings would not be collateral estoppel in later suits, since those findings were not appealable.  The panel tried to get both sides to admit that they were forum shopping.  Rambus was represented by Richard Taranto.

2007-1091  IN RE BURROWS (Rader Schall Farnan) 08-07-07 (1 of 5 stars)

This is an appeal of an obviousness rejection for a system that generates a coupon relating to travel on a computer and stores it on the computer.  The applicant asserts that this is a great advance over prior systems that actually printed the coupon.  A paraphrase from the rebuttal argument:  “How could the Patent Office just operate of its own whim and caprice?  Aren’t we then back to where we were years ago, as just a nation of men, and not laws?”

2006-1266  ZENON ENVIRONMENTAL V US FILTER (Newman Lourie Linn) 08-07-07 (3 of 5 stars)

Appellant first argues that incorporation by reference requires great particularity – Judge Lourie seemed to think the incporation was pretty clear but related to something other than what the patentee (Zenon) wanted to incorporate.  On a second issue, the appellant asserts that there was clear lexicography in the patent that should control over all other claim construction considerations.  There was also a cross-appeal on claim construction, in that the district court allegedly read several limitations into the claims.

2007-1014  AMGEN V ITC (Newman Lourie Linn) 08-07-07

The question here is whether the research exemption of Section 271(e)(1) can apply to method claims that are performed outside the U.S., where the resulting drug is imported into the U.S.  The is also a subsidiary question about whether the wording of Section 337 (covering ITC actions) would make the result any different than if this were a district court action.

2007-1117  US PHILIPS V IWASAKI ELECTRIC (Newman Lourie Linn) 08-07-07 (2 of 5 stars)

This is a claim construction case for a patent on halogen lamps.  Th claims recite a halogen content around 10-4, and the patentee/appellant argues that such a recitation is different from, and broader than, 1x10-4 (at least to a skilled artisan in that field).

2006-1637  CAPITAL BRIDGE V IVL TECHNOLOGIES (Michel Schall Bucklo) 08-08-07 (1 of 5 stars)

This is a claim construction appeal from a summary judgment of noninfringement, and focuses around an interpretation of statements made by the applicants during prosecution.  The preambles required that something be “wirelessly transmitted,” and the district court found this limitation to be vitiated.  The appellant appears to argue that there nonetheless is no need for a wireless transmitter.  At 7:42, after counsel made an assertion, the court asked:  “That isn’t true, is it?”  There is also a question of whether the appellant was raising a new issue at oral argument.

2007-1132  EON-NET LP V FLAGSTAR BANCORP (Michel Schall Bucklo) 08-08-07 (2 of 5 stars)

This is an appeal from a summary judgment that Flagstar has a license, and imposition of sanctions.  The appellant argues that, to get there, the district court messed up its sua sponte construction of “document file” (or something like that) so as to not cover paper documents.  The panel questions whether the district court really did construe the claims in that manner.  The panel also wonders why the appellant did not ask for a Markman hearing after the district court seems to have made a claim construction on the way to reaching a decision on license.  In the end, it seems that the appellee brought a broad motion for nonliability based on license, and that the appellant may have, or may not have, been on notice at some point that claim construction was going to be a subsidiary issue for the general motion.

2006-1634  CLASSEN IMMUNO V BIOGEN IDEC (Newman Moore Farnan, Jr.) (2 of 5 stars)

The main question is whether the 271(e)(1) exception for FDA preparatory activities can apply to post-approval actions that are directed to FDA reporting that is not related to safety issues.  The secondary issue relates to whether the patents here are “research tools” and whether that matters.  Finally, there is a question whether the claims are invalid under Section as covering a mere mental process.

2007-1199  ASTELLAS PHARMA V RANBAXY (Newman Moore Farnan, Jr.) (3 of 5 stars)

This is a double patenting case with pretty clear facts:  the first patent covers a method of making a compound, and the second claims the compound.  The defendant/appellant questions how a compound could possibly be nonobvious in light of the process for making the compund.  Apparently, the district court had relied on the fact that the claims were in different statutory classes (though I don’t understand that point).  The appellant did not believe that the requirement for focusing solely on the earlier claims made any difference, and emphasized that “same invention” double patenting was in play here.  There was also some discussion about whether “effective amount” was sufficiently clear language in the prior patent.  The appellee seems to suggest there is some difference between making an invention-to-invention comparison (which is okay according to the appellee) and making a claim-to-claim comparison (which is not okay).  Under that logic, the appellee notes that the process and the compound are wholly different.  The panel shows concern about giving the patent an improper extension of term.  The appellee says it is okay, relying on the General Foods decision for the concept that the second patent can dominate the first.  There’s also a debate over whether In re Freeman has been overruled.

2006-1638  Z4 TECHNOLOGIES V MICROSOFT (Lourie Linn Bucklo) 08-09-07 (2 of 5 stars)

The appellant leads with a claim construction issue, asserting the district court erred in construing “user” to cover people and computers, where the claims and specification distinguish users from computers.  There is also a Section 102(g) issues here about a product initially developed outside the U.S., sold in Brazil, but reduced to practice before the critical date in the U.S.  Also, the district court had instructed the jury that corroboration must come form a single document, and z4 suggested that an inventor needs to be named for 102(g), and that it is not enough to show that an invention existed (and that there thus was necessarily a prior inventor).  Judge Bucklo asked whether the errors in instruction might have been harmless.  There is also a Section 271(f) issue in this appeal (although z4 says there is no 271(f) issue).  Disclaimer:  F&R represented Microsoft in this appeal. 

2007-1034  INTL GAMCO V MULTIMEDIA GAMES (Rader Friedman Moore) 08-09-07 (2 of 5 stars)

This is yet another case asking whether an exclusive licensee had sufficient rights to bring suit (i.e., to have standing).  Here, the assignment or license seemed to be territorial, though varying, i.e., wherever the New York Lottery operates.  This was an interlocutory appeal.

2007-1057  CARITAS TECH V COMCAST (Newman Rader Prost) 08-10-07 (1 of 5 stars)

This is a claim construction appeal that relates to teleconferencing, and centers around fact-specific issues that I could not understand from the argument.  Apparently, the main question is whether a “telephonic connection” is limited to an end-to-end connection, i.e., whether it is from one phone to another phone, or whether it is from a phone to a switch (which is not an endpoint).

2007-1074  SCHWARZ PHARMA V PADDOCK LABS (Michel Lourie Moore) 08-10-07 (2 of 5 stars)

The district court found that prosecution history estoppel blocked the DoE – and one question is whether this is a factual issue or a legal issue.  The technology relates to the use of magnesium oxide as a stabilizer against cycloization and discoloration (sp?).  Apparently, there was general interchangeability, but perhaps not interchangeability for the particular purpose here.  There are also questions of whether foreseeability is a legal or factual issue.

Grant of Voluntary Dismissal Without Prejudice Late in Case Was Not Abuse of Discretion; Dimissal of “the action” is Dismissal of the Entire Action

Walter Kidde Portable Equip., Inc. v. Universal Security Instruments, Inc., __ F.3d __ (Fed. Cir. Mar. 2, 2007) (Gajarsa, Moore, JORDAN) (M.D.N.C.: Tilley)

KEY WORDS:  DISMISSAL, RULE 41, PREJUDICE (NO), WAIVER (YES), STANDING (N/A), HARMLESS ERROR (YES)

Fed Cir affirms grant of voluntary dismissal, without prejudice, of Kidde’s claims.  After USI raised question about Kidde’s standing in the district court and won some key pre-trial rulings, Kidde got the “action” dismissed (then fixed its alleged standing problem and filed a new suit).  The Fed Cir first decided it had jurisdiction because dismissal of “the action” is dismissal of the entire case, and not just of the complaint.  For the standard of review, the Fed Cir followed regional circuit law, applying an abuse of discretion standard to the dismissal of Kidde’s claims, but a de novo review to the dismissal of the counterclaims because a legal error was alleged there.  [Note: It may have been better for the Fed Cir to apply an abuse of discretion standard to both issues, and then to have noted that a legal error is one way in which a court abuses its discretion.]  On the merits, the dismissal of the claims was not an abuse of discretion because much of the work in the first case could be reused in the second, so that USI’s argument about wasted effort was simply wrong.  Also, USI had not explained below how losing the benefit of the court’s pre-trial rulings prejudiced it (so the points were waived).  The dismissal of the counterclaims was error because they involved separate issues of unfair competition and tortuous interference (and even dismissal of the patent counterclaims may have been error), but it was harmless because (a) USI could raise the issues in the second action, (b) USI asserted the “work product” doctrine in refusing the tell the court any reason there would be prejudice [a unique tactic], and (c) the pre-trial in limine rulings were necessarily preliminary and thus did not grant any rights.  Finally, the district court erred in granting the motion before it addressed standing, but the error was harmless because a remand would send the case to the same result.

District Court Stay Must Remain in Effect Until All Judicial Review Ends From ITC Proceeding

In re Princo Corp., __ F.3d __ (Fed. Cir. Mar. 1, 2007) (Bryson, Linn, DYK) (S.D.N.Y.: Brieant)

KEY WORDS:  CHOICE OF LAW, MANDAMUS, APPELLATE JURISDICTION, STAY

Fed Cir grants writ of mandamus requiring district court to stay its action until parallel ITC action is finished.  Both the ITC case and this case had previously been on appeal and remanded.  Applying its own law, the Fed Cir first refused to decline jurisdiction simply because the district court’s ruling was procedural and unrelated to patent law, since the ruling could directly affect the ITC proceeding via collateral estoppel effect.  On the merits, the Fed Cir determined that the phrase “until the determination of the Commission becomes final” in Section 1659 means “finality including judicial review,” consistent with other courts’ interpretation of most other similar provisions in the law, and consistent with the purpose of the statute (i.e., preventing parallel proceedings).  The Fed Cir rejected respondent Phillips’ arguments that (1) relief here is meaningless because only computing damages (which the ITC does not do) remains in the district court (the statute draws no such line); (2) the issues are all different between the district court and the ITC (Phillips is just wrong); (3) Princo waived its rights (Princo’s initial request for a stay was timely made, and Princo diligently pursued reinstatement of the stay when the district court lifted it); and (4) Princo waived by filing a summary judgment motion (Princo couldn’t be expected to gamble that the stay would be granted).

Abandonment of Appeal Did Not Kill Cross-Appeal; Party Did Not Show Excusable Neglect for Missing Deadline

Firsthealth of the Carolinas, Inc. v. Carefirst of Maryland, Inc., __ F.3d __ (Fed. Cir. Feb. 27, 2007) (Bryson, Gajarsa, LINN) (TTAB)

KEY WORDS:  TRADEMARK, APPELLATE JURISDICTION (YES), EXCUSABLE NEGLECT

Fed Cir affirms dismissal of Firsthealth’s counterclaims to kill Carefirst’s trademarks (in an opposition brought by Carefirst).  The Board refused to accept late evidence from Firsthealth where its excuses involved the birth of counsel’s child, the significant amount of testimony in the case, time conflicts with other matters, and a docketing error.  As an initial matter, the Fed Cir did not lose jurisdiction when Carefirst dropped its appeal from the Board’s finding of no likelihood of confusion, because Carefirst could still cause “damage” based on the Board’s rulings.  On the merits, the Board was reasonable in adopting the Supreme Court’s standard for “excusable neglect” from Pioneer v. Brunswick, and did not abuse its discretion here.

Prosecution Disclaimer Applies Unless it is Rescinded with Crystal Clarity; Claim Construction is Not Required if it Would Not be Material to Disposition of the Case

Hakim v. Cannon Advent Group, PLC, __ F.3d __ (Fed. Cir. Feb. 23, 2007) (Michel, NEWMAN, Rader) (W.D. La.: James)

KEY WORDS:  CLAIM CONSTRUCTION (NARROW), PROSECUTION DISCLAIMER (YES), ANTICIPATION (YES), EXPERT TESTIMONY

Fed Cir affirms summary judgment of noninfringement for one patent and invalidity for anticipation of another. The patents cover spill-resistant drinking cups. For the first patent, the applicants had broadened the claims from reciting a "slit" in the cover to reciting an "opening"; the district court properly limited the claims to a slit, because the applicant, by telling the examiner only that he was broadening the claims, did not provide sufficient clarity to note that he was wiping out a distinction (i.e., slit) that he previously made when arguing over prior art in the parent case. [This is an important case, because I doubt many other patents have any plainer rescissions of their disclaimers.] On anticipation of the second patent, the Fed Cir first noted that the district court did not need to perform a claim construction because there was no indication that any particular construction would have changed the result. On the merits, the district court did not err in finding that the prior art disclosed a limitation that Hakim said it did not. Finally, there was no err in rejecting Hakim's proffered expert declaration because Hakim had never identified himself as an expert and had not filed an expert report, and there was no need for expert testimony in any event. (The district court had placed the word "technology" in quotes when referring to the "technology" in this case -- indicating that he saw "technology" to be less than descriptive of a sippy cup.)

Note: The Fed Cir unfortunately referred to "recapture" here, which may lead some to cite this case in the context of the well-known recapture doctrine for broadening during reissue. This case is very different.

Section 1498 Applies Where Contract Does Not Result in (Alleged) Infringement But Work Plan Prepared by contractor Does

Sevenson Environmental Servs., Inc. v. Shaw Environmental, Inc., ___ F.3d ___ (Fed. Cir. Feb. 21, 2007) (LINN, Dyk) (W.D.N.Y.: Arcara)

KEY WORDS:  28 USC 1498, CHOICE OF LAW, CONTRACT INTERPRETATION

Fed Cir affirms summary judgment dismissing suit because the U.S. government was the proper defendant under 28 USC 1498.  Shaw had a contract to perform environmental remediation, and the particular accused technique was proposed by Shaw in a work plan approved by the government, not in the contract itself.  Section 1498 applies if the work is "for the government" and "with the authorization and consent of the government."  The Fed Cir first determined that "for the government" simply means pursuant to a government contract, and does not require that the "primary purpose" of the contract be the infringing activity, or that the government chose the infringing method.  The work was "with the authorization and consent of the government" even though the contract did not require the infringing method, because the work plan (prepared by Shaw) that Shaw was required to follow did require (alleged) infringement.  Thus, Shaw had immunity under 28 USC 1498.  (The Fed Cir applied its own law to interpret the contract because it was a government contract and it dealt centrally with patents (or at least a small part of it did).)

Plaintiff May Unilaterally Dismiss Until Proper Service of Answer; Service By Fax Ineffective Unless Party Expressly Consents in Writing

RFR Indus., Inc. v. Century Steps, Inc., __ F.3d __ (Fed. Cir. Feb. 16, 2007) (Michel, Schall, PROST) (N.D. Tex.: Kinkeade)****
KEY WORDS: NOTICE OF DISMISSAL, FRCP 41, FRCP 5, SERVICE, ATTORNEY FEES, PREVAILING PARTY

Fed Cir vacates grant of judgment on the pleadings and reverses fee award to Century.  After RFR filed suit, Century answered, with service by fax (the parties were in another litigation in which they were serving by fax).  RFR then filed a notice of dismissal without prejudice under FRCP 41(a)(1)(ii).  The district court refused to dismiss without prejudice, and granted Century's motion for judgment on the pleadings under FRCP 12(c).   The Fed Cir held (applying regional circuit law) that FRCP 41 gave RFR a unilateral right to dismiss without leave of court, because Century's fax service was not proper service under FRCP 5(b)(2), absent express written consent from RFR.  The notice of dismissal ended the case without prejudice, so resolkving the case on the merits "was both improper and without effect."  For fees, the Fed Cir held "that a plaintiff's voluntary dismissal without prejudice pursuant to Rule 41(a)(1)(i) does not bestow 'prevailing party' status upon the defendant."  Slip op. at 7.  Because RFR can refile its action, there was no "judicially sanctioned" change in the parties' legal relationship, so that neither party acquired prevailing party status.

Permissive Interlocutory Appeal Granted Where Matters Are Intertwined With Issues in Pending Appeals

Regents of the Univ. of Cal. v. Dako N. Am., Inc., __ F.3d __ (Fed. Cir. Feb. 14, 2007) (LOURIE, Clevenger, Moore) (N.D. Cal.: Patel)****
KEY WORDS:  INTERLOCUTORY APPEAL, CERTIFIED ORDER, CLAIM CONSTRUCTION

Fed Cir grants Regents' consented petition for discretionary interlocutory appeal under 28 USC 1292(b), of a claim construction order certified by the district court.  In two related appeals still pending in the Fed Cir, the Regents challenged the district court's denial of its preliminary injunction motion based on certain claim constructions.  While these related appeals were pending, the district court revisited its claim constructions, granted partial summary judgment of noninfringement for Dako, and certified the order for permissive appeal.  Because the claim constructions issues in the certified order are already at issue in the related appeal, the Fed Cir reasoned that there is no risk of piecemeal appeals or premature reviews, and that the more complete record provided by the certified order further judicial efficiency.  "Because the matters in the recent order are thus intertwined with the issues in the pending appeals, we determine that granting the petition in these unusual circumstances is warranted."

Fed Cir Closes Door To Possible Defenses To Inequitable Conduct and On-Sale Bar

Cargill, Inc. v. Canbra Foods, Ltd., __ F.3d __ (Fed. Cir. Feb. 14, 2007) (Linn, Prost, JORDAN) (D. Ore: Mosman)
KEY WORDS:  INEQUITABLE CONDUCT, MATERIALITY, INTENT, BALANCING, MOTIVE, ON-SALE BAR, COMMERCIAL OFFER FOR SALE, READY FOR PATENTING, REDUCTION TO PRACTICE (ACTUAL)

Fed Cir affirms summary judgment of invalidity by on-sale bar for two patents, and affirms judgment of inequitable conduct for other two patents.  The patents relate to heart-healthy canola oil.

Inequitable conduct: 

Materiality:  By the "reasonable examiner" standard, two withheld documents -- a research report and certain test data -- were material because they contradicted  the patentee's representations during prosecution that the claimed canola oil exhibited properties superior to a prior art oil.  Although the withheld results may not have been comparable to the data before the examiner because the research report used unusual conditions and the test data document did not show the testing conditions, "[a] reasonable examiner would certainly want to consider test data that is directly related to an important issue of patentability, along with the applicant's interpretation of that data.  Whether the examiner would have ultimately allowed the patent to issue is irrelevant ...."  Slip op. at 9. 

Intent: The district court did not err in finding intent based on a number of circumstantial factors, including (i) the repeated nature of the omission, where "[a]n applicant should know information is material when the examiner repeatedly raises an issue to which the information relates," id. at 10; (ii) the patentee's motive to deceive, as long as "the district court did not rely solely on the applicant's motive in drawing an inference of intent," id. at 11; and (iii) the high degree of materiality of the undisclosed test data.  The patentee's good faith belief that the data did not need to be disclosed did not undermine the finding of intent, because "[e]ven if there were a mitigating explanation for the withheld data, it was no excuse for the applicant's purposeful omission in this case."  Id. While recognizing "that subjective good faith can support a defense to inequitable conduct," the Fed Cir ruled that "[w]hen an applicant knows or obviously should know that information would be material to the examiner, as was true here, but the applicant decides to withhold that information, 'good faith' does not negate an intent to manipulate the evidence. Indeed, self-serving manipulation of highly material evidence can hardly be called 'good faith.'"  Id. at 13.

Balancing:  The Fed Cir found no abuse of discretion in the district court's conclusion of inequitable conduct.

On-sale bar: 

Commercial offer:  A pre-critical date letter to a third-party was a sale/offer for sale, because the "letter explicitly sets forth an amount of oil to be delivered…, at a specified unit price, and under a standard contract designation, FOB (free on board), which allocates the risks and responsibilities of a buyer and a seller." Id. at 16.   In affirming the district court, the Fed Cir (i) relied on inconsistencies in the patentee's arguments that the letter only showed the provision of samples for testing purposes or the response to the customer’s concerns about costs; (ii) ruled that "expressing a desire to do business in the future does not negate the commercial character of the transaction then under discussion"; (iii) dismissed as irrelevant the customer’s failure to pay the agreed amount  because "[t]here is no requirement that the sale be completed" for the bar to apply; and (iv) ruled that a declaration submitted in opposition to the summary judgment motion did not create genuine factual disputes.

Ready for patenting:  The oil was ready for patenting because it was reduced to practice and the evidence indicated that the patentee was aware of its utility.  That the transacted oil was intended for experimental purposes was irrelevant, because "that does not mean that the invention had not been reduced to practice," and because the patentee's lack of awareness of the specific characteristics making the invention useful did not contradict a finding of actual reduction to practice.

Federal Circuit Oral Argument Summaries - February 2007

These are VERY ROUGH summaries of the cases argued to the Federal Circuit in February 2007.  They are provided as a mechanisms for spotting cases that may issue in 3-5 months that have interesting issues.  Because of the disclaimers discussed in the January 2007 entry, they are not always complete or wholly accurate; listen to the MP3 of an argument (and get copies of the briefs) if you really want to know what is going on.  I did.

2005-1492  FESTO CORP v SMC CORP (Michel Newman Dyk) 2-5-07

This time around, the district court was tasked with determining whether two accused equivalent features were “foreseeable” when the applicant made the amendment.  She (Judge Saris) determined that the patentee did not meet its burden of overcoming the presumption, even though it presented evidence.  Judge Dyk (and the rest) asked if the equivalent was so unforeseeable as to be nonobvious, why should the patentee get to cover it?  They were not really satisfied with any of the answers; the attorneys and panel seemed to be looking past each other.  The argument was 1:30:00 long.

2006-1203  SYNGENTA SEEDS v MONSANTO COMPANY (Mayer Schall Bryson) 2-5-07

This is some sort of biotech, codon case.  The battle seems fairly fact-specific, and relates to whether JMOL of non-obviousness should be granted – this is a tough one for the appellant/patentee (I think Syngenta).  In addition, there is an issue (which seems to be closer, based solely on the argument) about whether the Syngenta patent adequately incporated another patent by reference, so as to pass the written description requirement – the question is how specific one needs to be in order to incorporate by reference.  The appellant is represented by Don Dunner; the appellee by Richard Taranto.  Note that these parties have a second argument this month also.

2006-1309  IN RE REED ELSEVIER (Mayer Schall Bryson) 2-5-07 (4 of 5 stars)

Reed is attempting to register LAWYERS.COM for its lawyers.com web site.  It seems to admit that the general website contains material that would make the mark generic, but argues that it has narrowed its description of goods to cover only a sub-set for which the mark is not generic.  Reed’s problem, of course, is that visitors to its web site likely will not understand what services the mark is covering and what it is not, and I suspect that is the reason for the rejection.  This could be an interesting case, as it seems there is little law in the area.  It was important enough that Solicitor Whealen arguedit himself (or maybe he just had nothing else to do).

2004-1440  ENTEGRIS INC v PALL CORP (Gajarsa Linn Moore) 2-5-07 (1 of 5 stars)

The district court granted a preliminary injunction, the defendant appealed, the defendant withdrew the appeal, and then the district court simultaneously dissolved the injunction (because new prior art brought into question the patent’s validity) and made a contempt citation.  The panel really challenged whether this was the sort of interlocutory appeal the court could here, since there is nothing appealable about dissolving an injunction and because the defendant was no longer appealing the grant of the injunction.  The cross-appellant wanted there to be jurisdiction so that it could challenge the dissolution of the injunction.  The appellant argued that the injunction was modified when the district court applied it against colorable imitations of the infringing products—the panel really was not buying this argument.  The appellant was also trying to rely on the cross-appeal as establishing jurisdiction.

2006-1371  IN RE PETRUS ACM NUIJTEN (Gajarsa Linn Moore) 2-5-07 (5 of 5 stars)

This is the big case about whether a “signal” can be patented.  The facts present the issue well because the invention really is part of the bits and bytes of the signal, i.e., the invention is relates to marking a file (typically represented by stored or traveling bits, thelatter of which is a “signal”) so that it can be identified such as to stop piracy.  The court seemed to think it had to resolve two questions: (1) whether the signal is something more than a mere idea or product of nature, and (2) whether the signal was “tangible.”  The Patent Office said it was only energy, not matter, and was thus intangible, while Nuijten (an employee of Phillips) said it was no less tangible than a lightening bolt.  Interestingly, Nuijten argued that the signal fit under both the “manufacture”  and “process” categories of Section 101.  Associate solicitor Chen did a very nice job and earned himself credibility with the panel (and me) by providing clear, honest answers to fairly difficult question.  Although this was definitely a “low energy” argument, both attorneys did a nice job.

2006-1497  POLYPRO v ADDISON (Gajarsa Linn Moore) 2-5-07 (1 of 5 stars)

This is an on-sale bar case, where the appellant says there is no evidence the patented invention was sold before the critical date – apparently, appellant’s position is that the judge connected general admissions about sales to the patented invention when there was no evidence to make the connection.

2006-1240  ORMCO CORPORATION v ALIGN TECH (Lourie Dyk O’Malley) 2-6-07 (1 of 5 stars)

The district court imported an “automatic” operation limitation into the claims when the claims plainly had no such limitation, but there was a clear disclaimer in the prosecution history.  The battle was over whether that limitation could be snuck into the claim.

2006-1429  IN RE LEVINE (Lourie Dyk O’Malley) 2-6-07 (1 of 5 stars)

The invention relates to some sort of overlay paper that is placed on a graphing machine.  The appellant did not make entirely clear what limitation(s) was missingin the prior art.  There was also an issue regarding whether the appellant raised motivation to combine as the only argument on obviousness in his opening brief, and then whether he added certain deficiencies in the prior art in his reply brief or at oral argument (waiver).  The case suffered a Rule 36 affirmance.

2006-1504  PODS v PORTA STOR (Lourie Dyk O’Malley) 2-6-07 (1 of 5 stars)

The microphone was not good on the appellant, so it was hard to tell what was going on.  The defendant/appellant raised ten or more issues, apparently, but focused on claim construction, arguing (based on statements in the file wrapper) that a certain claimed frame had to go all around a particular container.  The appellant argues that it could have won on obviousness had the district court not improperly excluded its expert.  In addition, the district court granted JMOL of infringement under the doctrine of equivalents, and Judge Dyk really questioned the appellee that holding.  The appellee says that the appellant never raised the point below, but Judge Dyk notes that the appellant waived its right to argue waiver on appeal.  I could not understand what the parties were raising in this appeal.

2006-1244  DESIGNING HEALTH v ERASMUS  (Michel Rader Schall) 2-6-07 (2 of 5 stars)

In an earlier appeal, the Fed Cir apparently held, as a matter of law, that the appellant had not proven damages for its fraud claim.  Somehow, appellant is back up and is arguing that it should get another trial on damages.  Appellant makes an argument that it has sufficient evidence, and that it tried unsuccessfully to get in at the first trial.  The appellant does try to raise 7^th amendment and due process issues, and also cites a Supreme Court case for the first time at the argument.  There were a number of interesting arguments.

2006-1506  DATATREASURY v ELECTRONIC DATA   (Michel Rader Schall) 2-6-07

This was a venue battle.  A first case in the ND Tex was coming close to trial (though the judge had made no Markman or SJ rulings, and thus had not invested too much in the case) when the judge dismissed it in favor of another case by Datatreasury against a bunch of defendants.  EDS said the judge abused his discretion in finding that judicial economy was a good reason to transfer, since so much work would need to be repeated in the ED Tex case.  The panel was all over EDS because of the deferential standard of review, and all over DT for wanting to have the case in the ED Tex.  Example questions posed to DT:  “Why do you supposed your opponent is so afraid of ED Tex? …  Why do you so want this case to be in the ED Tex?”  The case suffered a Rule 36 affirmance.

2006-1260  ACUMED LLC v STRYKER CORPORATION (Gajarsa Linn Moore) 2-6-07

This is a fairly fact-specific claim construction case.  The appellant accuses the district court of relying too much on dictionaries.  The main dispute seems to be whether a “curve” must not include an “angle” (apparently a sharp change in direction) to it.  The appellant’s product apparently includes such a sharp change in direction.

2006-1542  HENKEL CORP v PROCTOR & GAMBLE (Gajarsa Linn Moore) 2-6-07

In this interference, the issue on appeal relates to the burden to show appreciation of reduction to practice.  The invention is a detrergent that maintains some detergent capability past a pre-wash cycle (I think it’s those little packs you put in your disjwasher), and the appreciated (or perhaps unappreciated) feature was a dissolution rate.

2006-1294  REGAL ELECTRONICS v PULSE ENGINEER (Newman Mayer Prost) 2-6-07 (3 of 5 stars)

This is a claim construction and vitiation case.  The patent covers some sort of signal conditioning device having a block near a “right angle turn” of some wires.  The accused device has two straight wires that intersect ata right angle.  The appellant says the district court messed up the claim construction by thinking of “turn” as a verb rather than a noun.  The panel did not seem to buy that argument, but was very interested in vacating on the vitiation point.  (The appellee argued that two straight wires were the opposite of wires that turn, so that there was vitiation.)

2006-1472  MONSANTO COMPANY v SYNGENTA SEEDS (Rader Gajarsa O’Malley) 2-7-07

Patentee Monsanto makes two claim construction arguments in asserting that summary judgment of noninfringement should not have been granted: (1) finding that a claim reciting “obtaining progeny obtained by the process of claim 1” was a dependent claim; and (2) adding functional language to the claim so that it covered only a plant rather than a gene.  On the first point, Syngenta apparently uses the stuff from claim 1, but performed claim 1 before the patent issued.  (Or the issue may be whether a process in which only the last step is performed after the patent issues, is an infringement.)  Monsanto also argues that the district court erred on enablement by holding that Monsanto had to enable all sorts of uses rather than a use.  The patents are the “Lundquist” patents; Ron lundquist has moved from being a very capable inventor to being a very capable principal at Fish & Richardson.

2006-1515  BIOMEDICAL PATENT v STATE OF CA DHS (Rader Gajarsa O’Malley) 2-7-07

This is yet another sovereign immunity case.  The state sought to intervene in a case and obtain discovery of positions taken by the appellant BiomedPatent.  It seems the state litigated for a long time before claiming immunity.  The state notes that it intervened in 1997, long before the Act blocking sovereign immunity claims was declared unconstitutional by the Supreme Court (but Judge Gajarsa notes that the state cannot unwaive its immunity). 

2006-1523  BYRNE v BLACK & DECKER (Rader Gajarsa O’Malley) 2-7-07

Judge Gajarsa opened by asking about the Fed Cir’s jurisdiction, since the counterclaim of invalidity was still outstanding – but the panel did not follow up at the oral argument.  (It sounds like it will in its opinion.)  On the merits, the appellant argues that the district court erred in granting JMOL of noninfringement for its string trimmer having a “guide structure” with a “generally planar … surface,” where the accused structure appears to use a wire.

2006-1330  BAUM RESEARCH v UNIV OF (Newman Friedman Moore) 2-7-07

The appellant university is appealing from a rejection of its attempt to assert sovereign immunity.  There are two potential problems: (1) the university did not raise the point until after trial (but does the jurisdictional nature of sovereign immunity excuse this problem?), and (2) the university entered a license in which it expressly agreed to be subject to the jurisdiction of the court.  However, the license was signed by someone who may not have had authority.  There was some question whether she had to have actual authority, or could also have apparent authority.  There was lots of discussion about whether she could have no right to waive immunity, but could still have the power to contract on the U’s behalf (she was apparently the head of the licensing department, so this could be a problem.)

2006-1496  LINQ INDUSTRIAL v INTERTAPE  (Mayer Linn Prost) 2-7-07

This case received a Rule 36 affirmance.  Judge Linn starts by noting that the appellant was raising 13 issues on appeal, so that perhaps none of them was particularly good – the appellant said that many flow from an alleged error in claim construction.

2006-1307  CENTRAL ADMIXTURE v ADVANCED CARDIA (Schall Gajarsa Prost) 2-8-07 (1 of 5 stars)

On the main issue, the appellant argues that the patentee’s certificate of correction should not have been issued because it made a substantive change (“osmolarity” to “osmolality” apparently, for measuring some blood property).  I would expect a precedential opinion in this case simply because the court has very little law in this area.

2006-1453  ARK WELDING v MEYER PRODUCTS  (Schall Gajarsa Prost) 2-8-07

The appeal challenges a grant of JMOL of no reasonable royalty damages, apparently – or perhaps a grant of JMOL of no willful infringement, where the defendant had a group of engineers study the patent.  The appellee raised a jurisdictional issue regarding payment of a judgment – apparently arguing that the payment created “full satisfaction” – but the question is whether the “full satisfaction” covered additional amounts that was at issue in the present case.  (The appellee argued that the Fed Cir had no jurisdiction.)

2006-1442  FRANKLIN ELECTRIC v DOVER CORP (Mayer Clevenger Linn) 2-8-07 (1 of 5 stars)

This is a claim construction appeal relating to whether “facilitate positioning“ requires physical contact to occur.  Although the appellant criticizes the district court for relying too much on dictionaries, this seems like a fact-specific case.  The appellee relies heavily on comments made by the inventors during prosecution.

2006-1455  YOUNG v LUMENIS (Lourie Prost Moore) 2-9-07

Appellant patentee appeals a judgment of indefiniteness (based on the term “near”) and inequitable conduct, for a patent on surgically declawing cats. The patentee asserts that a specific numeric limit is not applicable because the patients vary in size. On the inequitable conduct issue, the reference was ultimately submitted before the patent issued—and the Fed Cir has no case finding inequitable conduct in such a situation.

2006-1282  OSRAM GmbH v ITC (Newman Rader Dyk) 2-9-07

The appellant challenges claim construction of a patent covering white LEDs.  The question was whether a particular ingredient in an epoxy slurry was to be measured “by number” or “by volume.”  Judge Rader sounded very friendly to appellant OSRAM.  Apparently, it was customary to use volume, but it made more sense to use number—but the panel questioned whether there was testimony from an expert that it made more sense to use number.

2006-1465  L B PLASTICS v AMERIMAX HOME PROD (Newman Rader Dyk) 2-9-07  (3 of 5 stars)

The question is whether “heat welding” can cover a continuous line of hot metal adhesive – the patentee/appellant says the claim construction was too narrow and the district court erred in granting summary judgment of noninfringement.  Judge Rader thinks the prior art (which probably, in his view, renders the claim obvious) could prevent expansion of the claims to cover the accused products, and Judge Dyk wonders if Johnson & Johnston couldn’t be expanded to cover a situation in which prior art disclosing a certain technique is presented to the applicant, and then the applicant does not claim that technique.  The district court found the difference to be “foreseeable,” and thus ruled that it could not be covered by the doctrine of equivalents.  The appellant argues that “foreseeability” alone cannot block recourse to the doctrine.  Judge Dyk chastises the parties for marking too much material as confidential.  This panel might do something new to the doctrine of equivalents here.

2006-1329  TAKEDA CHEMICAL v ALPHAPHARM PTY (Lourie Bryson Dyk) 2-13-07

This is an appeal from a finding that the patent claims on some drug compound were not obvious.  The appellant argues that (1) the district court should have considered certain statements in a prosecution history to be part of the prior art, (2) the district court should not have allowed the patentee to show post-filing unexpected results, and (3) the district court erred in requiring Alpha to show complete predictability in order to prove obviousness.  The court seems to have erred on certain of the broader claims. There was also lots of discussion surrounding the issue of unexpected success.

2006-1364  TAKEDA CHEMICAL v RANBAXY LABS (Lourie Bryson Dyk) 2-13-07

This is an appeal from a finding of no inequitable conduct.  Judge Dyk had a lot of questions about what happened at trial, with respect to certain notebooks on which the appellant sought discovery that might have been important to the inequitable conduct issue.  It appears that thew claim is that the patentee should have disclosed certain internal testing with respect to an enablement issue. The district court may have granted summary judgment of no inequitable conduct (because the panel seemed to be pushing the appellee on this point).

Federal Circuit Oral Argument Summaries - January 2007

This is a new service on this blog.  Every month, we will be listening to all of the IP oral arguments at the Federal Circuit (which we have already been doing for a year) and will briefly summarize them.  Note that we listen in the car and summarize the arguments in relatively large groups, so our knowledge will be limited to what is raised in the argument, we will likely miss a lot of points on top of that (we need to drive safely), and we will likely forget even more points before we type up the summaries.  Thus, these summaries are simply meant to give you some limited insight into issues that may be coming out of the court in the next few months.  We have found this knowledge to be invaluable to our appellate practice.  In addition, if you have an approaching argument, this service will let you find certain issues and listen to how the various judges on the court react to those issues.  Enjoy.

2006-1156  LIEBEL-FLARSHEIM CO v MEDRAD INC (Lourie, Rader, Bryson) 1-08-07

This is a written description case, in which the court held as a matter of fact that the patent was invalid.  The patent disclosed a single embodiment, and the claims that were amended after the filing date covered multiple different embodiments, so the panel challenged the appellant about the fneed to enable the full scope of the claims.

2006-1421  LIEBEL-FLARSHEIM v MEDRAD (Lourie, Rader, Bryson) 1-08-07

This relates to a request for sanctions under Rul37(b)(2), where the witness was pulled during a 30(b)(6) deposition relating to infringement facts when the defendant kept asking claim construction questions.  The court sanctioned the patentee without providing a warning, which the local rules required, and without a necessary findingof bad faith.  Defendant’s counsel says he gave the warning, so the rule is met (sounds like a stretch).

2005-1570  MONSANTO CO v MCFARLING (Lourie, Rader, Bryson) 1-08-07

This time, McFarling has picked up Mark Lemley (Stanford Prof) as his attorney.  The issue is one of double recovery.  He argues that, because Monsanto sought extra damages under a theory that McFarling could have resold his seed many times over, then Monsanto cannot get an injunction preventing him from selling the seed many times over.  (This is a VERY scary prospect for Monsanto, because it can let GMO seed get outside of its system where the seed can be increased and sold in competition with Monsanto.)  McFarling tries to argue exhaustion at one point, but it was not in his blue brief.

2006-1308  IN RE ZIMMER (Lourie, Rader, Bryson) 1-08-07

The invention relates to a calendar that has each page personalized with a name of a person -- the issue is whether this involves printed matter that does not add to patentability.  In addition, the court is concerned that there is nothing unobvious about slapping a name on each page of a calendar (and also wonders whether the names have to differ from page to page, so that any old insurance company calendar would anticipate).

2005-1587  RFR INDUSTRIES v REX-HIDE INDUSTRIE (Michel, Schall, Prost) 1-08-07

2005-1610  RFR INDUSTRIES v CENTURY STEPS (Michel, Schall, Prost) 1-08-07

These cases present a procedural mess that could only arise in Texas.  One case involves indemnification and “circular” indemnification.  Apparently RFR sold products and then the customer got sued.  In the other, RFR sold some products and Century never paid—but Century sought protection from the exhaustion doctrine.  The panel was skeptical of this argument.

2006-1388  STICHTING LODESTAR v AUSTIN NICHOLS (Michel, Schall, Prost) 1-08-07

When the Stichting people tried to register WILD GOOSE for whiskey, they should not have been surprised that the WILD TURKEY whiskey people would oppose.  Stichting argues that no substantial evidence supported the Board’s conclusion that the impression of the WILD TURKEY mark was game birds.  This is probably a rule 36 appeal.

2006-1385  ESPEED v BROKERTEC USA (Linn, Dyk, Moore) 1-08-07

The district court found inequitable conduct because eSpeed used the patented software before the critical date.  The question on appeal is whether the relevant code was latent or not.  The district court opinion and much of the discussion at oral argument tended not to distinguish between code that was not used and code that could not be used because it was not hooked up to any active code (i.e., it could not be called).  Judge Moore had lots of questions on this technical point.

2006-1391  SEVENSON SERVICES v SHAW ENVIRO (Linn, Dyk, Moore) 1-08-07

This is a 28 USC 1498 case.  The issue:  if a government contract does not require infringement, but the contractor subsequently produces a work plan that requires infringement and gets integrated into the contract by reference, does the government require infringement such that the case must be heard in the CFC?

2006-1400  IN RE WHEATLEY (Linn, Dyk, Moore) 1-08-07

This is a 3M case in which 3M says the examiner gave the prior art too much credit.  Specifically, the teaching on which the examiner relied was in the same general technology, but related to a different problem and a different solution than that in the pending claims.

2006-1354  IMMERSION CORP v SONY COMPUTER (Newman, Schall, Bryson) 1-08-07

This is an appeal of a denial of Rule 60 relief.  Sony claims that Immersion hid facts about the presence of a license (apparently to a prior art patent), and that Immersion referred to he issue in its closing.  Although there is a lot of discussion about whether the evidence was important or not, Sony argues that materiality of the evidence is irrelevant – i.e., that the wrong of hiding the evidence is grounds for a new trial, and that courts do not get into pondering over materiality in such situations.  The district court apparently found that Sony had done some bad things on this issue two, and laid a pox on both houses.  Sony says its post-trial activities are irrelevant to whether it gets a new trial.

2006-1114  LOGAN v HORMEL FOODS (Lourie, Linn, Moore) 1-09-07

This is a claim construction case on spiral cut ham.  The claim requires that a spit go “through” the ham, and the district court held that it had to go all the way through.  There may have been some other issues also.

2006-1389  TRISTRATA TECH v MARY KAY (Lourie, Linn, Moore) 1-09-07

Mary Kay argues that the patentee said that concentrations in wrinkle cream as low those used by Mary Kay would not work, and thuis that the patent was not enabled as a matter of law.  There were also some disputes over evidentiary rulings that went against Mary Kay.

2006-1449  IN RE WRIGHT (Lourie, Linn, Moore) 1-09-07

The invention is a combined hotel registration form and key package, and there was something unique about the arrangement of perforations on the thing.  The applied prior art was some sort of ticket holder, and the applicant seems to argue that there was no motivation to combine.

2006-1380  ARNDT v MOKAI MFG (Newman, Rader, Prost) 1-09-07

The appellant starts with a “grand” statement, and the panel quickly narrows him to the real issue—the meaning of “kayak.”  Apparently, the patent explicitly defines the term.  There is also a question about whether the district court erred in finding vitiation on summary judgment, since the accused device is sort of kayak like.

2006-1405  APOTEX v MERCK (Newman, Rader, Prost) 1-09-07

In a prior suit, Merck killed Apotex’s patent under Section 102(g) using its own development.  This appeal relates to a Rule 60 action/motion by Apotex alleging that new evidence shows that Merck had intended to keep its prior process as a trade secret, so that it was “suppressed/concealed” and could not qualify under Section 102(g).

2006-1481  NATL RURAL ELECTRIC v SUZLON WIND (Newman, Rader, Prost) 1-09-07

The TTAB found no likelihood of confusion where the opposer promotes rural electrification and the mark seeker sells wind turbines.  Apparently the marks look similar but have a number of differences.  This seems like an affirmance based on deference to the Board (i.e., the substantial evidence standard).

2006-1236  EBERLE DESIGN v RENO A & E (Bryson, Gajarsa, Dyk) 1-09-07

On a procedural issue, the patentee moved for JMOL at the close of its case, but not at the close of all the evidence.  It sounds out of luck on this issue.  On the substance (for a new trial motion), the patentee argues there could not be an on-sale bar because (1) the various papers did not create an ability for the supposed offeree to accept and offer; and (2) the product was still in development and changing, so it could not have been offered for same.

2006-1263  HOCKERSON-HALBERSTADT v COSTCO (Newman, Friedman, Rader) 1-10-07

This is a claim construction appeal about shoes, where defendant-appellant argues that the district court erred in construing “lower rim” to be part of the outsole rather than the midsole.  It sounded like the defendant-appellant had some good points, but that the district court reached a fair construction.

2006-1265  CARGILL v CANBRA FOODS (Linn, Prost, Jordan) 1-10-07

The district court found inequitable conduct based on the patentee’s failure to provide the PTO with certain test data.  The patentee argues that the data was irrelevant because it used a preparation technique not addressed in the patent.  In addition, the district court appears to have believed that no one was deceptive, but found inequitable conduct in any event because close cases are to be resolved by disclosure.

2006-1422  TRANSONIC SYSTEMS v FRESENIUS USA (Linn, Prost, Jordan) 1-10-07

At the beginning of this argument, Judge Linn—very miffed—asked both parties to approach the podium and explain the status of a counterclaim in the case, i.e., whether it was still live so that there would be no appellate jurisdiction.  On the merits, the issue is claim construction regarding a method of using a shunt with hemodialysis – it is not entirely clear what is important in this case.

2006-1431  BERGER v ROSSIGNOL (Michel, Gajarsa, Dyk) 1-10-07

The patentee failed to file its preliminary infringement contentions on time under the ND Calif local rules.  He argues on appeal that no prior case has held that lack of preliminary contentions kills a case, and that the district court was nonetheless required to conduct a claim construction (because the Fed Cir, in other settings, has said that an infringement determination “requires” claim xconstruction followed by application to the accused products) and the patentee then could have provided final contentions in response to the claim construction.  The judges hassle the appellee some to identify any prejudice from the delay—much like the judges hassled the appellee (who ultimately won) in the O2 Micro appeal.  Sounds like Rule 36.

2006-1420  WALTER KIDDE v UNIVERSAL SECURITY (Gajarsa, Moore, Jordan) 1-11-07

Appellant/defendant Universal complains that the district court erred in dismissing its non-patent counterclaims (e.g., unfair comp and antitrust) and dismissing Kidde’s claims without prejudice when it granted Kidde’s Rule 41 motion (filed after Universal had raised serious issues regarding Kidde’s ownership of the patent).  The error seems to be clear regarding the counterclaims, but the questions at argument were whether it was harmless error.  Universal does not like the dismissal without prejudice because it had obtained a favorable ruling due to late filing of expert reports by Kidde.

2006-1148  FIRSTHEALTH v CAREFIRST (Bryson, Gajarsa, Linn) 1-12-07 (2 of 5 stars)

In this TM case, it sounds like there had been a prior opposition, and this case involved a petition for cancellation.  There are some issues about the appellant bringing in late evidence that the Board then excluded.  There are also questions of standing (i.e., whether the appellant had a cognizable injury) and mootness.

2006-1355  FURMINATOR v ONTEL PRODUCTS (Bryson, Gajarsa, Linn) 1-12-07

On appeal from a denial of preliminary injunction, the patentee argues that the district court erred by construing “a handle axis” and “the handle axis” to cover only one axis.  The appellant admitted that its proposed construction would permit movement anywhere.  The patent apparently relates to an animal fur comb.  The appellee says the claim construction issue does not matter because the patent is either invalid or not infringed, depending on the claim construction that is applied.  Judge Bryson did ask whether irreparable harm can be presumed after eBay—though this case probably does not require resolution of the issue.

2006-1279  IN RE BAYER AKTIENGESELLSCHAFT  (Newman, Schall, Moore) 1-12-07

This is a trademark case for the mark ASPIRINA for aspirin.  This would seem like an easy affirmance (especially given the standard of review) but the mark was registered in many countries, including most Spanish-speaking countries.  So at least two members of the panel seemed very troubled.

2006-1342  CIAS v ALLIANCE GAMING (Newman, Schall, Moore) 1-12-07

The question:  If you have a limitation calling for a “widget comprised of definite elements,” what happens when the accused widget includes definite and indefinite elements, and the presence of the indefinite elements makes the widget itself indefinite.  (The “widget” is some sort of algorithmically-derived number/indicator for a slot machine, it seems.)  The district court found no infringement, and the panel seems inclined to affirm.

2006-1286  IN RE COMISKEY (Michel, Dyk, Prost) 1-12-07

The rejected claims relate to placing an arbitration requirement into a unilateral document like a will or codicil.  One member of the panel questioned whether this was simply the sort of provision drafting that lawyers do every day, while another roughed up the PTO for weaknesses in the applied prior art.  The entire panel was interested in knowing whether they were precluded from making their own Section 101 rejection or vacating for the PTO to do so, especially since the claims were not limited to a process conducted on a computer.

2006-1376  ADRAIN v SUPERCHIPS (Michel, Dyk, Prost) 1-12-07

The case is about interpreting a district court’s claim interpretation – the appellant gets accosted for adding a limitation to the district court’s claim construction.  The technology relates to some sort of module you hook to a car, and there seems to be confusion by what the court meant by the device meeting some requirement when the vehicle is “in use.”