Publications / McDermott Newsletters / IP Update, Volume 5, No. 5, May 2002

IP Update, Volume 5, No. 5, May 2002

May 2002

IN THIS ISSUE

Patent/Doctrine of Equivalents

U.S. Supreme Court Vacates Federal Circuit Festo Decision
By Paul Devinsky & Keith George

The U.S. Supreme Court reversed the absolute bar rule propounded by the Federal Circuit in the Festo case. In its unanimous decision, the court emphasized that the issue of equivalents, like the related issue of estoppel that was the focus of its 1997 decision in Warner-Jenkinson, is not amenable to a bright-line rule. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. ____, 2002 Lexis 3818 (May 28, 2002). The Supreme Court accepted the proposition of the U.S. Court of Appealsfor the Federal Circuit that any amendment that narrows the scope of a claim for any reason related to patentability may give rise to a prosecution history estoppel. But the court did not accept the more controversial aspect of the Federal Circuit decision that an estoppel absolutely bars the application of the doctrine of equivalents (DOE) with respect to the narrowed claim element. Rather, the Supreme Court created a presumption that equivalence would be barred and placed the burden of proving that the estoppel does not preclude coverage of the particular equivalent in issue on the patentee. The patentee may overcome the presumption by showing that, at the time of the amendment, one skilled in the art could not reasonably be expected to have drafted a claim to literally encompass the alleged equivalent.

The Federal Circuit

The doctrine of equivalents is an equitable doctrine, which the courts have developed over several years to prevent others from using the substance of an invention by making only an insubstantial change. In turn, the courts developed the doctrine of prosecution history estoppel to limit the application of the doctrine of equivalents in order to prevent the recapture of subject matter surrendered to distinguish the patent claims over prior art.

The subject matter involved in the Festo case relates to a magnetically coupled rodless cylinder, as might be used in a conveyor application. The claimed device comprises a fluid-driven piston that moves back and forth within the cylinder. A sleeve mounted on the outside of the cylinder moves back and forth with the movement of the piston, due to magnetic coupling between magnets on the piston and magnets within the outer sleeve. In addition to the magnets, the claimed invention recited that the piston has a pair of guide rings, which provide a sliding fit for the piston within the cylinder. During prosecution, the applicant amended the independent claim to recite "plural guide rings … and first sealing rings located axially outside said guide rings." The amended version of the claim also specified that the sleeve was made of a magnetizable material.

The accused SMC devices only used one sealing ring instead of two and did not have magnetizable sleeves. Hence, the district court found no literal infringement. However, the district court found (on summary judgment) that the accused devices infringed one of the patents in suit under the doctrine of equivalents, and a jury had found that the accused devices infringed another patent under the doctrine of equivalents.

In its en banc decision, Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., the Federal Circuit held that any required or voluntary amendment that narrows the scope of a claim for any reason related to the statutory requirements for a patent will give rise to prosecution history estoppel with respect to the amended claim element. The Federal Circuit also imposed a new, bright-line rule to apply in the event of such an estoppel: Any time a patentee narrows a claim element for a reason related to patentability, there would be no range of equivalents available for the amended claim element. Under this absolute bar, the degree of difference between the alleged equivalent and the element in the claim is irrelevant, no matter how insubstantial.

In applying its new rule, the Federal Circuit found that the claim amendments created an estoppel and held that as a matter of law, Festo could not assert the SMC devices were equivalent to the amended claim elements because the estoppels simply barred application of the doctrine of equivalents absolutely.

The Supreme Court

The Supreme Court accepted the Federal Circuit holding that any narrowing amendment made for any reason related to patentability (including compliance with §112) gives rise to an estoppel.

However, as to the scope of the resulting estoppel, the Supreme Court found the imposition of the absolute bar to be overreaching by the Federal Circuit and vacated that portion of the decision. Instead, the Supreme Court imposed new rebuttable presumption against equivalence.

The modified "flexible" bar adopted by the Supreme Court was the approach advocated by the U.S. Justice Department (representing the U.S. Patent and Trademark Office) as amicus curiae. Specifically, the Supreme Court held that the patentee, as the author of the amended claim language, bears the burden of establishing that the surrender attendant the narrowing amendment does not encompass the particular equivalent in question. The rationale for this burden is that the patentee may be expected to give careful consideration to various ways to redefine its claim and, in so doing, should reasonably be expected to draft amended claims encompassing readily known equivalents.

The result is a rebuttable presumption, which the patentee must overcome, that the scope of the estoppel created by the narrowing amendment surrenders any subject falling in scope between the original claim language and the amended claim language. Some possibilities suggested by the court to rebut the presumption would be for the patentee to establish that the equivalent in question was "unforeseeable at the time of the application" or that at "the time of the amendment…one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent. The patentee may also attempt to rebut the presumption by establishing that the rational underlying the amendment bears "no more than a tangential relation to the equivalent in questions."

Practice Notes

Narrowing Amendments ~ It should be expected that every claim amendment made during prosecution will be closely scrutinized in litigation to determine if it was narrowing. The key evidence relevant to this inquiry is likely to be what the patent prosecutor does and says in the record before the U.S. Patent and Trademark Office. Litigation is likely to focus on two issues: when is an amendment narrowing and what is a reason relating to patentability. To some extent the Federal Circuit has already addressed these questions in the interim between its Festo decision and the Supreme Court Festo opinion. For example, narrowing may occur when amending an original claim (Pall Corp. v. PTI Technologies Inc.), when including limitations from a dependent claim in an independent claim (Pioneer Magnetics, Inc. v. Micro Linear Corp.) or when submitting a new, narrower claim (Mycogen Plant Science Inc. v. Monsanto Co.). The estoppel effect of narrowing amendment may also be created even as to an unamended claim where a similar limitation was added to a parallel claim, thereby surrendering subject matter to overcome a rejection. Intermatic, Inc. v. The Lamson & Sessions Co.

The Federal Circuit also appears to be inclined to find that any narrowing amendment must be for some type of reason related to patentability. For example, in Pioneer Magnetics, the Federal Circuit found the amendment was related to patentability, even though the patentee presented some evidence that the relevant amendment to the independent claim was made inadvertently and was repetitive of a limitation appearing in a dependent claim. The problem facing applicants and prosecuting attorneys is that the only sure way to avoid estoppel due to a narrowing amendment seems to be to avoid narrowing the claim element in the first place.

The Supreme Court in Festo noted that a cosmetic amendment would not narrow the patent’s scope and thus would not raise the estoppel. Several decisions by the Federal Circuit have also suggested that amendments that only make express, a recitation of a feature that was already inherent in the original claim, is not a narrowing of the scope of the properly construed claim. TurboCare v. General Electric Co.; Bose Corp. v. JBL, Inc.; and Interactive Pictures Corp. v. Infinite Pictures, Inc.

However, patentees should expect to face an uphill battle when attempting to establish that the amendment was not narrowing. Aside from the normal claim construction evidence, the evidence most likely to sway the courts may be found in the record before the U.S. Patent and Trademark Office, to the extent the patentee has offered a contemporaneous rational in the remarks associated with amendment as to why the amendment does not narrow the claim.

The Rebuttable Presumption ~ If an estoppel is found, patentees will now be required to overcome a presumption of no equivalence by proving that the alleged equivalent falls within the scope of what is now permitted by the Supreme Court. It is expected that the prosecution history will often provide the best evidence on this point. Hence, it is more important than ever that patent prosecutors make every effort to both maximize the literal scope of coverage and at the same time optimize the record to support a position on equivalents that the patentee may want to take in the later litigation. Prosecuting attorneys may now face the prospect that during the litigation, they will be asked to explain why she amended the claims the way they did and why she did not use some hypothetical language supplied by defendant’s counsel that would have literally covered the accused product.

The Critical Date ~ When attempting to rebut the presumption, it remains for later decisions to determine which of the dates discussed by the court, the application or the amendment date, is most critical.

Foreseeability ~ As to "unforeseeability," it appears that the alleged equivalent would need to be either unknown or not recognized as an equivalent at the time of the prosecution. Alleged equivalents that are known at the time of prosecution are virtually eliminated since a person of skill in the art (as author of the claim and/or amendment) is presumed to have included such structures within the literal scope of the claim.

For those prosecuting patent applications, the question is what type of record to make to support an unforeseeability argument. Any indication in the record that other embodiments of a claim element were considered, but were ultimately excluded by the narrowing amendment, would seem to suggest actual foreseeability and should be avoided. In most instances, the need to narrow a claim arises in an effort to overcome prior art. In such cases, the best course may be to "bite the bullet" by simply focusing on what the claim does not cover, i.e., the applied prior art, and, thereby, attempt to minimize the damage.

Tangential Relationship ~ The Supreme Court held that when the patentee shows that the rationale underlying the amendment bears "no more than a tangential relation to the equivalent in question," estoppel should not bar equivalence. However, no guidance is provided as to what might qualify as a "tangential relationship."

However, as the courts increasingly focus on the patent itself and its prosecution history, success in this area may be more likely if the applicant creates a clear rationale for each amendment, recognizing the risk that presenting any such explanation will likely preempt any argument as to the existence of an estoppel in the first instance.

Patent/Prosecution History Estoppel

New Life for Doctrine of Equivalents
By Paul Devinsky & Natalia Blinkova

Despite shared inventors, similar subject matter and a common assignee, the U.S. Court of Appeals for the Federal Circuit held that the prosecution history of one patent does not bar equivalents for claims of another patent where the two patents share no formal relationship and were presented to the patent office as patentably distinct inventions. Abbott Labs. v. Dey, 2002 U.S. App. LEXIS 7484 (Fed. Cir., April 23, 2002).

Abbott sued Dey for infringement of U.S. Patent No. 4,397,839 and U.S. Patent No. 4,388,301. The ‘839 patent resulted from continued research on lung surfactant compositions performed by one of the co-inventors of the ‘301 patent. The applications for the ‘839 and ‘301 patents were filed as separate and independent cases; but were co-pending, commonly assigned, shared a common subject and a common inventor and were examined by the same examiner. While the claims of the two patents recited different but overlapping percentages of phospholipid content, the asserted claim of the ‘839 patent also claimed adding free fatty acids to the composition.

Abbott conceded that the accused drug did not literally infringe the claims of the ‘839 patent, as tests showed that the phospholipid content of the accused formulation were outside the claimed range of the ‘839 patent. While the district court agreed that the percentages of phospholipid used in the accused formulations were equivalent to those claimed in the ‘839 patent, it nonetheless granted the defendants summary judgment of non-infringement, citing Pharmacia. The district court further found that Abbott was precluded from relying on the doctrine of equivalents to establish infringement of the ‘839 patent based on the prosecution history of the ‘301 patent. The prosecution history of the ‘839 patent contained no amendments or arguments that would estop the patentee from claiming infringement under the doctrine of equivalents. Abbott appealed.

The Federal Circuit vacated and remanded, stating that the relationship between the two patents "is insufficient to render particular arguments made during prosecution of the ‘301 patent equally applicable to the claims of the ‘839 patent." The Court reasoned that despite the common inventor, subject matter and assignee, the ‘839 patent claims a different composition that the examiner concluded was patentably distinct from the claims of the ‘301 patent.

The Court further reasoned that just because a patent is an improvement patent rather than a pioneer patent does not mean that it is not entitled to any range of equivalents. With regard to the district court’s hypothetical claim analysis, the Federal Circuit noted that having constructed a hypothetical claim (i.e., claim 1 of the ‘839 patent changed to literally recite the accused range of equivalents) the district court then compared the hypothetical claim to the ‘301 patent and found the asserted range of equivalents overbroad as it encompassed the prior art. However, as explained by the Federal Circuit, the district court’s error lay in comparing only the phospholipid limitation and ignoring the additional free fatty acid limitation of the ‘839 patent — a limitation not found in the ‘301 patent. Thus, the Court concluded, "The ‘301 patent cannot anticipate the hypothetical claim that literally covers the accused device, because the ‘301 patent does not disclose each and every limitation of that claim."

Finally, the Federal Circuit held that "the fact that the claim recites a numeric range, does not, by itself, preclude Abbott from relying on the doctrine of equivalents."

Copyright/Infringement

"Supersubstantial" Similarity Test Does Not Apply to All Fact-Based Works
By Paul Devinsky

In reversing the district court, the U.S. Court of Appeals for the Tenth Circuit held that the "supersubstantial" similarity test was incorrectly applied in the context of protected elements of a fact-based World War II memoir. Jacobsen v. Deseret Book Co., Case No. 01-4027 (10th Cir., April 19, 2002).

Jacobsen wrote a personal memoir entitled Who Refused to Die, recounting his survival of the Bataan Death March and subsequent imprisonment and torture during World War II. Deseret Book was the publisher of a series, Children of the Promise, a fictional work portraying the life of a Mormon family during World War II. The story of one of the family’s sons closely follows the experiences related in Who Refused to Die.

The district court, citing the U.S. Supreme Court Feist decision and the Tenth Circuit TransWestern Publishing decision, applied a "supersubstantial similarity" test in view of what it regarded as a "thin" copyright on a fact based work, and granted the defendant’s motion to dismiss for failure to state a claim. Jacobsen appealed.

The Tenth Circuit reversed. Although recognizing that a motion to dismiss should be judged based on the legal sufficiency "of the complaint alone," i.e., to state a claim for which relief may be granted, the Tenth Circuit went on to note that "the district court may consider documents referred to in the complaint if the documents are central to the plaintiff’s claim and parties do not dispute the document’s authenticity. Thus, the Tenth Circuit found it proper for the district court to have considered both works in question in ruling on the motion: "When a district court considers the original work and the allegedly copyrighted work in deciding a 12(b)(6) motion, the legal effect of the works are determined by the works themselves rather than by the allegations in the complaint…." The Court went on to note that after considering the works, the standard for dismissal for failure to state a claim is that it must appear "…beyond doubt [plaintiff] can prove no set of facts in support of his claim that would entitle him to relief."

The Court noted that the degree of substantial similarity required to prove infringement may vary depending on the degree of creativity involved in the copyrighted work. Thus, the less protectable material in the copyrighted work, the greater the substantial similarity required to prove infringement. While acknowledging the holding in Feist that "copyright protection in a factual compilation is thin," and in TransWestern Publishing that "if substantial similarity is the normal measure required to demonstrate infringement, ‘supersubstantial’ similarity must pertain when dealing with thin works," the Court nevertheless concluded that the district court incorrectly applied the "supersubstantial similarity" test here.

According to the Court, TransWestern Publishing merely affirmed that the required measure of "substantial similarity" may vary according to circumstances: "Merely applying a supersubstantial similarity test to all fact-based works would ignore the differences between ‘sparsely embellished maps and directories’ and ‘elegantly written biography.’"

In this case, the Court concluded that the copyrighted work, Who Refused to Die, involved more creative effort and original expression than, for example, the telephone directories at issue in Feist and TransWestern Publishing, and that the measure of substantial similarity here, therefore, required less similarity than would be required if the work in question were a simple factual compilation.

Patents/Biotech

Disclosure of Genetically Altered Tobacco Plant Did Not Enable Genetically Altered Tomato Plant
By Judith Toffenetti

Affirming the decision of the U.S. Patent and Trademark Office (USPTO) in an interference directed to genetically altered, insect-resistant tomato plants, the U.S. Court of Appeals for the Federal Circuit found that disclosure of successful experiments with genetically altered tobacco plants would not have enabled one skilled in the art to produce tomato plants "without undue experimentation." Adang v. Fischhoff, 2002 U.S. App. LEXIS 7220, Case No. 01-1169 (Fed. Cir., April 10, 2002).

On the issue of enablement, the Board of Patent Appeals and Interferences focused on the differences between transformed tobacco plants, which were exemplified in the Adang patent, and transformed tomato plants, which were merely listed along with several other plants as potential subjects of similar genetic transformations. The Board also considered Adang’s own statements made during prosecution concerning unreliability of data obtained in other species of transformed tobacco plants, as well as prior and contemporaneous art disclosing that expression of foreign genes in plants, particularly the Bt gene, was not "straightforward." The Board found that the combination of the inventor’s statements during prosecution and the shortcomings of plant transformation and foreign gene expression noted in the art raised "substantial doubts" that Adang’s disclosure would have enabled one of skill in the art at the time to practice the invention without undue experimentation.

The Federal Circuit, applying the substantial evidence standard, affirmed. The Court noted that Adang’s arguments during prosecution that the cited prior art showing of gene expression obtained in a different strain of tobacco was not predictive of similar expression in the strain Adang used were evidence of the lack of predictability of successful transformation in any given plant. In addition, the expert witness proffered by Adang in the interference testified that gene expression is affected by the particular strain of plant used for the assays. On the basis of these statements, the Court found it "reasonable to conclude that those of skill in the art would not have expected expression in tomato plants to track that in a particular strain of tobacco."

Other evidence reviewed by the Court included prior art publications enumerating problems with plant transformation in obtaining foreign expression of the Bt gene, including the inventor’s own publication reporting problems associated with expression of the Bt gene in a foreign host cell, as well as scientific literature (published within a year of Adang’s filing date) that disclosed repeated failures of others to obtain successful transformation of tobacco plants with the Bt gene.

Practice Note: Historically, genetic engineering of plants, such as gene therapy, has been viewed by the USPTO and courts to be an unpredictable art, based primarily on the vast amount of literature reporting failures and problems associated with gene uptake and expression. However, successful plant genetic engineering results are published almost daily, and such publications should be relied upon during prosecution to counter enablement rejections. Also, as Adang illustrates, statements made during prosecution to distinguish over prior art or in an inventor’s publications should be crafted carefully so as not to negate enablement of broad claims.

Patents/Drugs

Hatch-Waxman Act Certification Sufficiency of Notice for Paragraph IV Certification Still in Limbo
By John Prince

Noting the complexity of the Hatch-Waxman Act (H-W) statutory scheme, the U.S. Court of Appeals for the Federal Circuit upheld a dismissal, with prejudice, of a patent suit filed against a U.S. Food and Drug Administration (FDA) applicant who had certified under the H-W that its generic drug did not infringe the patent in question. Minnesota Mining and Mfg. Co. v. Barr Laboratories, Inc., Case Nos. 01-1369, -1370 (Fed. Cir., May 1, 2002).

This case involves the interaction between the 180-day waiting period under the H-W, 21 U.S.C. § 355(j)(5)(B)(iv)(II), for a second manufacturer of a generic drug and the sufficiency of notice of no patent infringement under "the paragraph IV certification" procedure.

3M is the manufacturer of Tambocor® and the owner of a patent claiming intermediate compounds in the drug’s manufacture. Tambocor® (flecainide acetate) is used in the treatment of heart rhythm disturbances. As required by the H-W, 3M’s patent is listed in the FDA’s so-called Orange Book. Alphapharm, the first appellant to file with the FDA for approval to market a generic form of flecainide, is not currently marketing the drug.

Barr was the second manufacturer to file with the FDA for approval to market a generic form of flecainide. As required by the H-W, Barr filed a paragraph IV certification simply stating that its formulation did not infringe the listed 3M patent. After 3M sued Barr for patent infringement, it discovered that, in fact, Barr’s formulation did not infringe the patent. 3M requested that the district court dismiss the suit without prejudice, alleging that Barr had "hoodwinked" 3M into bringing suit by failing to provide 3M with sufficient notice through a more "detailed statement" in its paragraph IV certification. The district court, however, dismissed the suit with prejudice, finding "no impropriety in Barr’s declining to provide further information." The district court found that 3M was merely attempting to avoid an adverse judgment in the district court proceeding" to avoid triggering the 180-day period (under H-W §355(j)(5)(B)(iv)(II)) after which Barr could bring its drug to market.

The Federal Circuit, in affirming the dismissal with prejudice, noted that neither the district court, nor any other court, had the authority to determine the sufficiency of notice in a paragraph IV certification. Following its recent decisions in Mylan v. Thompson and Andrx v. Biovail, the Federal Circuit held that matters affecting listing of a patent in the Orange Book cannot be enforced by a private party in a patent infringement action but rather must "be enforced, if at all, in the context of an action under the Administrative Procedure Act (APA)" at the FDA.

In a concurring opinion, Judge Gajarsa explained that the "majority fails to address the key issues in this appeal and adds an entire layer of administrative complexity to create a sizeable procedural Gordian knot." Per Judge Gajarsa, generic drug companies "who clearly do not infringe" should not have to "survive administrative challenge to their paragraph IV certification notice before they can obtain a favorable judgment" and trigger the 180-day period. The concurring opinion also quotes the FDA as stating that it "lacks expertise in patent law" and "is neither prepared nor required to become involved in issues concerning sufficiency of notice for purposes of enforcing patent law."

Patents/On-Sale

Licensing of a Method Does Not Place the Method on Sale
By Lawrence Cullen

In vacating a decision by the U.S. Patent and Trademark Office Board of Appeals & Interferences, the U.S. Court of Appeals for the Federal Circuit held that granting a royalty bearing license to use a method and conveying technical know-how related to implementing the method does not place the method on sale because the method is not carried out as a result of the transaction. In re Kollar, Case No. 01-1640 (Fed. Cir., April 11, 2002).

Redox Technologies, Inc., the assignee of Kollar, filed a patent application directed to a process for preparing a dialkyl peroxide. Approximately 15 years prior to its filing date, Redox reduced the invention to practice and entered into an agreement with Celanese Corporation for the purpose of "conducting research and development (R&D) in the Field … with a goal to achieving, by the end of 5 R&D years, Celanese approval for a commercial plant in the Field." In the agreement, Redox, in exchange for a series of annual royalty payments, licensed to Celanese a method covered by the claims of the Kollar application and disclosed to Celenese technical information concerning the claimed process.

The Board held that the agreement constituted a firm offer to sell embodiments of the claimed process, thus triggering an on-sale bar. The Board reasoned that Redox had granted to Celanese a "right to commercialize" Kollar’s invention and disclosed to Celanese the necessary technical information to utilize that invention in exchange for royalty payments, which constituted the firm offer to sell. On rehearing, the Board further stated that "a claimed process can be physically represented by a written description in a document which not only identifies the process but also enables the practice of that chemical process by one of ordinary skill in the art," and that transferring this written description for consideration is a commercial exploitation of the claimed process.

The Federal Circuit reversed, noting that, although the claimed method was ready for patenting (under the second prong of the Pfaff test), it was not the subject of a commercial offer for sale (the first prong of the Pfaff test). The Federal Circuit noted that a claim to a process, unlike a claim to a device or apparatus, consists of doing something, and, therefore, has to be carried out or performed. Thus, the Federal Circuit reasoned that the grant of a license to perform a process and conveyance of know-how describing the process and how it should be carried out, "is not a ‘sale’ of the invention within the meaning of § 102(b) because the process has not been carried out or performed as a result of the transaction." The Court noted that the sale of a product will bar the process used to make the product because, under its Chroma Graphics decision, the process is being commercialized. The Court also noted that the sale of a product used to perform a claimed process will bar claims to the process (citing Petrolite) and actually performing (or offering to perform) the process for consideration will bar claims to the process (citing Scaletech).

The Court went on to explain that early licensing of an invention is not inconsistent with the traditional policies underlying the on-sale bar because "licenses further the objective of making inventions available to the public by enabling inventors to place their inventions into the hands of parties that are in a better position to commercialize the invention and thus disclose it to the public." The Court also explained that although an inventor may economically benefit from licensing his invention, the license "is only part of the pre-commercialization process aimed at making the invention commercial."

Patents/Claim Construction

Words May Limit a Claim, but a Picture Has Multiple Meanings
By Paul Devinsky & Shamita Etienne-Cummings

The U.S. Court of Appeals for the Federal Circuit overturned a summary judgment of no literal infringement, finding that the district court improperly limited the scope of a claim term to the structure illustrated in the patent drawings. CCS Fitness, Inc. v. Brunswick Corp., Case No. 01-1139 (Fed. Cir., May 3, 2002).

The asserted patents describe a stationary exercise machine. In each asserted claim, the exercise machine is recited as including two reciprocating members. The only disclosure in the patent specification of a "reciprocating member" consists of an illustration of a single straight bar used to support the user footpads and enable the user to push on the footpads. Other than the illustration, the patents do not describe the shape of the reciprocating members or whether the members are formed of the single component or of multiple components. The defendant argued that the accused device did not infringe the asserted claims because, rather than a straight bar "reciprocating member," the accused device used "pedal levers" that curved upwards as they approached the frame end of the machine and were formed of multiple components. Brunswick further argued that the claim term "reciprocating member" was so lacking in structure as to essentially constitute a means plus function claim element.

The district court limited the claim term "reciprocating member" to the structure depicted in the figure, reasoning that "if [the patentee] wanted to claim a device whose reciprocating member included a curved, multi-component structure, its patents should have included an illustration that showed these embodiments." The district court granted summary judgment of no infringement. CCS appealed.

The Federal Circuit disagreed. In reversing, the Federal Circuit provided an analytical framework for analyzing when and how to apply the meaning rule. The Court started with the general rule that "we indulge a ‘heavy presumption’ that a claim term carries its ordinary and customary meaning…and that … dictionary definitions may establish a claim term’s ordinary meaning … so long as the definition does not ‘fly in the face of the patent disclosure’ …."

The Court then explained that this presumption and dictionary definition cannot be overcome "… simply by pointing to the preferred embodiment or other structures or steps disclosed in the specification or prosecution history." Rather, the Federal Circuit held that "… the ordinary meaning of a claim term may be constricted in four ways: first, the claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the dispute claim term in either the specification or prosecution history…. Second, a claim term will not carry its ordinary meaning if the intrinsic evidence shows that the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention."

"Third, … a claim term will not have its ordinary meaning if the term ‘chosen by the patentee so deprive[s] the claim of clarity’ as to require resort to the other intrinsic evidence for a definite meaning." Last, as a matter of statutory authority, "a claim term will cover nothing more than the corresponding structure or step disclosed in the specification, as well as equivalents thereto, if the patentee phrased the claim in step- or means plus-function format."

Applying these principles, the Federal Circuit found that none of the exceptions to the plain meaning rule had been established and found the expert and other extrinsic evidence relied on by Brunswick to be "not particularly helpful" as the meaning of claim term in dispute could be resolved "by resort to the intrinsic evidence and dictionary definition only."

The Federal Circuit dismissed CCS’s argument that the claim element was essentially functional, noting that CCS had not overcome the "presumption" that absent use of the word "means," a claim element is not restricted by §112,¶6 and that the word "member" does suggest some structure: "… a term need not connote a precise physical structure in order to avoid the ambit of [§112, ¶6]."

Patents/Claim Construction

Federal Circuit Awards "Bonus Points" to Defendants-Claim Limited by "Acquiescence"
By Paul Devinsky

In affirming the district court’s claim construction, the U.S. Court of Appeals for the Federal Circuit found that acquiescence during prosecution limited the broad or plain meaning of the claim term "bonus points" as used in a claim directed to a fantasy football game. Fantasy Sports Properties, Inc. v. Sportsline.com Inc., Case Nos. 01-1217, -122 (Fed. Cir., April 24, 2002).

Fantasy is the assignee of U.S. Patent No. 4,918,603, which relates to a method of and apparatus for playing a "fantasy" football game on a computer. The game is played by a number of "owners" or "managers" who operate fantasy "teams" or "franchises" based on actual football players. Points are awarded to each team based upon the performance of its players in actual professional football games for categories such as touchdowns, field goals and points after touchdowns. The total points for each team are tabulated utilizing a database containing the relevant statistics for each player, which is automatically updated after the actual football games are played each week. The specification teaches that, in addition to the standard points given for a particular play in an actual game, "bonus points" may be awarded based upon, inter alia, "the difficulty of the play."

The district court initially interpreted the "bonus points" limitation to mean points that are awarded "in addition to the normal points for a scoring play" and determined that Fantasy disclaimed any game that awards additional points for distance scoring and total yardage by amending the claim in issue to add the "bonus points" limitation in order to overcome a rejection based upon a prior art publication. Based on its construction, the court granted summary judgment that the Yahoo! product, which only awards points equal to the points given in an actual professional football game, does not infringe the patent as a matter of law.

Two others accused infringers, ESPN and SportsLine, thereafter filed separate motions for summary judgment of noninfringement based on the court’s initial claim construction. The district court then clarified its previous construction of the term "bonus points" to mean "additional points, above and beyond standard scoring, that are based upon the difficulty of the play," (i.e., "for scoring plays not typically associated with the position of the scoring player") and determined that ESPN’s Fantasy Football game did not infringe as a matter of law because that product does not award additional points for "out-of-position" scoring.

The Federal Circuit affirmed the claim construction, citing the ‘603 patent specification as providing a dictionary for departing from the plain meaning rule, and concluded that the term "bonus points" is properly limited to additional points awarded beyond those given in an actual football game for unusual scoring plays, such as when a player scores in a manner not typically associated with his position.

The Court also found that the prosecution history "clearly demonstrates that Fantasy surrendered any interpretation of the term ‘bonus points’ that encompasses the methodologies taught in the [prior art] article for awarding additional points beyond those given in an actual football game."

The prior art detailed a number of scoring methods that might be utilized in tabulating the total points for each of several fantasy football franchises, including but not limited to assigning points for distance scoring and total yardage. During prosecution, the patent examiner rejected several of the claims in Fantasy’s application over the prior art article, and in doing so noted that the "[u]se of a computer to store data previously maintained on paper files is well known." The examiner further rejected another claim, asserting the article "discusses [the] use of a distance scoring method in which the player scores are a function of the length of the play." The only claims found to be allowable were those reciting the "bonus points" limitation at issue. Fantasy, without comment, rewrote the rejected claims in independent form to include the "bonus points" limitation.

Based on that prosecution history, the Federal Circuit found that Fantasy acquiesced in those rejections and "cannot now be heard to argue post hoc that it was the combination of the aforementioned limitations that rendered its invention patentable over the prior art. Fantasy, therefore, disclaimed any interpretation of the term ‘bonus points’ that encompasses scoring methods described in the [prior art] article, including distance scoring and total yardage."

The Federal Circuit found Fantasy’s claim differentiation argument to be "without merit": "The doctrine of claim differentiation creates only a presumption that each claim in a patent has a different scope." The doctrine "cannot broaden claims beyond their correct scope."

Copyrights/Registration

Ninth Circuit Punts on Issue of Validity of Copyright
By Lisa Stone

Applying the doctrine of "primary jurisdiction, the U.S. Court of Appeals for the Ninth Circuit has refused to determine the validity of a copyright registration raised in a declaratory judgment suit," insisting the issue should be first considered by the U.S. Copyright Office. Syntek Semiconductor Co., Ltd. v. Microchip Technology Inc., 285 F.3d 857 (9th Cir. 2002)

Syntek and Microchip both design, manufacture and sell microcontrollers, i.e., integrated circuits used to control a system or process in an electronic product. The operation of microcontrollers is dictated by microcodes, which are low-level programming instructions. Syntek filed a lawsuit seeking declaratory judgment that Microchip’s copyright registration in its microcode is invalid since, when Microchip registered its copyright in the microcode with the Copyright Office, it did not supply the Copyright Office with the original source code. Rather, Microchip deposited source code that it had regenerated or "decompiled" from object code. Syntek argued that the Copyright Office should not have registered the code because the decompiled source code was not a bona fide copy of the original source code. The district court granted summary judgment to Microchip and Syntek appealed.

The Ninth Circuit reversed, holding that the doctrine of primary jurisdiction requires referral of the action to the Register of Copyrights. The Court instructed that, in determining the desirability of applying the primary jurisdiction doctrine, it must consider the best way to resolve an issue that has been placed by Congress within the jurisdiction of an administrative body having regulatory authority pursuant to a statute that subjects an industry or activity to a comprehensive regulatory authority and that requires expertise or uniformity in administration. The Ninth Circuit determined that, on the facts of this case, application of the doctrine of primary jurisdiction was desirable because Congress clearly intended to establish national uniformity in copyrights; the question of whether decompiled object code qualifies for registration as source code under the Copyright Act is an issue of first impression; resolution of the question at hand requires analysis of whether the agency acted in conformance with its own regulations in granting the registration; and the Copyright Office has an established administrative process for cancellation of copyrights, although this process is "ill-defined." As a result, the Ninth Circuit remanded the action to the district court with instructions to dismiss the suit without prejudice "in order that the parties may pursue appropriate administrative remedies before the Copyright Office."

Practice Note: Three days after the Ninth Circuit’s ruling, David Carson, General Counsel of the Copyright Office, announced that the Copyright Office will not cancel invalid copyright registrations at the request of a third party, remarking that the Copyright Office is "not set up for that." Regarding the Microchip case, Mr. Carson predicted that when third parties come to the Copyright Office on cancellation issues "we’ll just say no, and then we’ll be back where we started." See Patent, Trademark & Copyright Journal, Vol. 63, No. 1569 at 547 (BNA) (2002).

Patents/Litigation

Court Use of Independent Technical Advisor Found to Be Proper
By Todd Mobley

Applying Ninth Circuit law (but in a holding that may well have broader application), the U.S. Court of Appeals for the Federal Circuit has ruled that, subject to restrictions designed to avoid "undue influence," it is proper for a court to appoint a technical advisor to assist in its decision making. Techsearch L.L.C. v. Intel Corp., Case Nos. 00-1226-1250, 2002 U.S. App. LEXIS 7202 (Fed. Cir., Apr. 11, 2002).

The patent in suit involved complex computer microprocessor architecture (specifically, a Reduced Instruction Set Computer or RISC microprocessor) developed to emulate the architectural behavior of another microprocessor. The district court appointed a technical advisor to assist it with claim construction and, with the advisor’s assistance, ruled against Techsearch on certain key issues, ultimately entering summary judgment of non-infringement against Techsearch. Techsearch appealed, arguing that the district court improperly relied on its technical advisor in reaching its decision.

The Federal Circuit disagreed. Viewing the issue as a procedural one and, therefore, applying the law of the regional circuit (in this instance, the Ninth Circuit), the Federal Circuit held that the circumstances of the case were "exceptional" and warranted the appointment of a technical advisor. The Court also held that the district court had employed adequate precautions to prevent undue influence by its technical advisor. These precautions included appointing a neutral advisor, limiting the advisor’s role to explaining the terminology and theory underlying the evidence and prohibiting the advisor from conducting independent investigations, providing evidence to the court or contacting parties and witnesses.



 

McDermott Will & Emery

McDermott Will and Emery