IP Update, Volume 5, No. 7, July 2002
July 2002
IN THIS ISSUE
- Federal Circuit/Jurisdiction - Federal Circuit Follows Supreme Court in Holmes—No Jurisdiction Over Appeal Where No Alleged Claim Under Patent Law
- Patents/Biotech - Court Reverses Itself on Whether Biotech Material in Public Depository May Satisfy Written Description Requirement
- Patents / Claim Construction - "Heavy Presumption" That Patent Claim Carries Ordinary and Customary Meaning Revisited
- Patents/Reissue - Patentee in Reissue Application Permitted to Add New Claims Broader Than Non-Elected Claims in Original Patent
- Patents/§ 112, ¶ 6 - Patent Must Clearly Disclose Structure Corresponding to the "Means," or the Doctor Can’t Cure the Indefiniteness Disease
- Trademarks/Famous Marks - Fame of Mark Is Dominant and Possibly "Outcome- Determinative" Factor in Likelihood of Confusion Analysis
- Patents/Public Use - Public Use Analysis Involves Consideration of Totality of the Circumstances
- Patents/Damages - Patent Owner Cannot Recover Both Reasonable Royalty on Utility Patent and Infringer Profits on Design Patent for the Same Sale
- Collateral Estoppel - Partial Summary Judgment May Not Be "Final" for Purposes of Collateral Estoppel If Claim Mooted Before Trial
Federal Circuit Follows Supreme Court in Holmes—No Jurisdiction Over Appeal Where No Alleged Claim Under Patent Law
By Mary Chapin
The U.S. Court of Appeals for the Federal Circuit held that the recent Supreme Court decision in Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., (IP Update, Vol. 5, No. 6) dissolves its jurisdiction over an appeal where jurisdiction was previously predicated on a patent infringement counterclaim. Telecomm Technical Services, Inc. v. Siemens Rolm Communications, Inc., Case No. 00-1579, -1580 (July 2, 2002).
Telcomm appealed from a district court judgment granting Rolm summary judgment on Telcomm’s monopolization and attempted monopolization claims under the Sherman Act and denying class certification on the antitrust claim. Telecomm also challenged Rolm’s standing to bring its patent and copyright infringement counterclaims, which had resulted in a jury verdict of patent and copyright infringement in favor of Rolm. Rolm cross-appealed the district court’s summary judgment denial of its computer copying counterclaim under 17 U.S.C. § 117.
The Federal Circuit acknowledged that its jurisdiction for the case as originally filed was predicated on Rolm’s patent infringement counterclaim. Because of the intervening Supreme Court decision in Holmes, which held that the Federal Circuit cannot assert jurisdiction over a case in which the complaint does not allege a patent claim, the Federal Circuit held that it no longer has appellate jurisdiction and transferred the case to the Eleventh Circuit. As the Federal Circuit explained, jurisdiction cannot be conferred on the Federal Circuit by waiver or acquiescence of the parties, and therefore, because the Holmes decision dissolves its jurisdiction over the appeal, the Court raised the question of jurisdiction sua sponte and transferred the appeal to the regional circuit court.
Court Reverses Itself on Whether Biotech Material in Public Depository May Satisfy Written Description Requirement
By Judith Toffenetti
The U.S. Court of Appeals for the Federal Circuit has now reversed its recent decision (reported in IP Update, Vol. 5, No. 4) holding a patent owned by Enzo BioChem invalid for failure to comply with the written description requirement of U.S. patent law. In its new decision, the Federal Circuit found compliance with the written description requirement based on a public deposit of a claimed nucleutide sequence. Enzo Biochem, Inc. v. Gen-Probe Inc., Case # 01-1230
(July 15, 2002).
In reversing its earlier decision, the Federal Circuit adopted the U.S. Patent and Trademark Office’s (PTO) standard for determining compliance with the written description requirement. The court noted that under the PTO’s guidelines, the written description requirement would have been met for all of the claims at issue if the disclosed functional characteristics of preferential binding of the claimed nucleic acids were coupled to a disclosed correlation between that function and a structure that is sufficiently known or disclosed. In this case, Enzo’s deposited materials were incorporated by reference in the specification, leading the court to conclude that "[t]he sequences are thus accessible from the disclosure in the specification," thereby satisfying the written description requirement.
The Court continued, "Whether reference to a deposit of a nucleotide sequence may adequately describe that sequence is an issue of first impression in this court. In light of . . . the practical difficulties of describing unique biological materials in a written description, we hold that reference in the specification to a deposit in a public depository . . . constitutes an adequate description of the deposited material sufficient to comply with the written description requirement [of Patent Act section 112, para. 1]"
In holding that Enzo had raised a genuine issue of material fact as to whether a reasonable fact-finder could conclude that the claimed sequences are adequately described by their ability to hybridize to nucleic acid molecules that, although not sequenced, are available to the public, the Federal Circuit noted that under the PTO guidelines "functional claiming is permissible when the claimed material hybridizes to a disclosed substrate."
Two of Enzo’s arguments that were dismissed by the court are worth noting. Enzo had argued that the written description requirement for the generic claims is met as a matter of law because the claim language appears word for word in the specification. In rejecting this argument, the Court held that regardless of whether claim language appeared as an original claim or is present in the specification, the language must convey an adequate description of the invention. "[A] claim does not become more descriptive by its repetition, or its longevity."
The Court also dismissed Enzo’s argument that the written description requirement is met by a showing of possession of the claimed invention, in this case biological deposit of sequences within the scope of the claims, because "it does not by itself provide a written description in the patent specification." (emphasis in the original). Even for biological inventions, "Compliance with the written description requirement is grounded on the fact of the deposit and the accession number in the specification, not because a reduction to practice has occurred." The Federal Circuit remanded the case for a determination of whether Enzo is entitled to the full scope of the claims on the basis of the deposit of a few sequences and the disclosed functional ability of the claimed genus of sequences to hybridize to the deposited sequences, specifically advising the lower court to follow the PTO’s guidelines.
Practice Note: Breathe a sigh of relief and wait for the next installment when the Court determines whether the deposit of a few nucleic acids, coupled to functional language in the specification describing the ability of claimed sequences to specifically hybridize under specified conditions to the deposited nucleic acids, provides sufficient written description for a broad genus of sequences.
"Heavy Presumption" That Patent Claim Carries Ordinary and Customary Meaning Revisited
By Paul Devinsky
The U.S. Court of Appeals for the Federal Circuit, following up on its recent decision in CCF Fitness v. Brunswick (reported in IP Update, Vol. 5, No. 5), has construed a claim broadly based on the "‘heavy presumption’ that a claim term carries its ordinary and customary meaning." Teleflex, Inc., v. Ficosa North America Corp., et al, Case No. 01-1372 (Fed. Cir. June 21, 2002).
The patent in question (the ‘182 patent) is directed to a component of a two-piece shift cable used in connection with automatic transmissions. Because the cable is in two pieces, it facilitates the automobile manufacturing process and permits the cable to be taken apart if transmission or shifter servicing is later required. The claim includes a recitation to a "clip" that is part of the connection between the two cable pieces. Only a single embodiment of a clip was disclosed in the ‘182 patent. That clip includes a single pair of legs extending into the connection.
Ficosa prevailed on the claim construction issue, the lower court holding that the claimed "clip" is limited to the single embodiment disclosed, i.e., the district court construed the claim as limited to a clip having a single pair of legs, but the jury nevertheless returned a verdict of literal infringement. Both sides appealed.
The Federal Circuit took the opportunity to present a primer on claim construction, noting that the Court engages in a "‘heavy presumption’ that a claim term carries its ordinary and customary meaning" (citing its recent decision in CCS Fitness regarding limited exceptions to that rule).
The Court noted that a specification may limit specific claim terms where the inventor chooses to be his own lexicographer or may be used to resolve an ambiguity where a claim term lacks clarity or where the specification expresses an exclusion or restriction "representing a clear disavowal of claim scope." Similarly, the Court sanctioned use of the prosecution history to limit a claim where it demonstrates "that the patentee intended to deviate from a term’s ordinary and accustomed meaning…." In the present case the Court found that simply because only a single embodiment of a "clip" was described in the ‘182 patent specification does not warrant limiting the claim to the disclosed structure, distinguishing prior cases on their specific facts and concluding that "an accused infringer cannot overcome the ‘heavy presumption’ that a claim term takes on its ordinary meaning simply by pointing to the preferred embodiment or other structures or steps disclosed in the specification or prosecution history. We hold that claim terms take on their ordinary and accustomed meanings unless the patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term by redefining the term or by characterizing the invention in the intrinsic record using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope."
Applying this principle, the Court held that nothing in the intrinsic evidence indicates that "clip" should be limited to "a single pair of legs."
Patentee in Reissue Application Permitted to Add New Claims Broader Than Non-Elected Claims in Original Patent
By Brian Seidleck
In a case of first impression, the U.S. Court of Appeals for the Federal Circuit has held that broader generic claims may be presented in a reissue application even though they may encompass non-elected inventions from the original application. In re Doyle, Case No. 01-1439 (Fed. Cir. June 12, 2002).
The inventor Doyle originally filed an application in which the examiner imposed a nine-way restriction requirement. Doyle elected the method claims drawn to using a genus catalyst to insert carbene fragments into carbon-hydrogen, oxygen-hydrogen, nitrogen-hydrogen, and silicon-hydrogen bonds. The remaining claims were cancelled and no divisional applications were filed during the pendency of the application which covered the non-elected groups. However, within two years of the issuance of the patent in question, Doyle filed a reissue application. In his request for reissue, Doyle sought to broaden the claims to cover the reaction of the defined catalysts with a genus of prochiral molecules, not simply the insertion of the carbene fragments.
The Board of Patent Appeals and Interferences, citing In re Orita, precluded Doyle from obtaining claims in a reissue application that broadly read on the subject matter of non-elected groups. The Federal Circuit reversed, holding that Doyle’s reissue application was permissible under 35 U.S.C. § 251, since Doyle attempted to broaden his claims to cover subject matter that he invented and disclosed, but that he inadvertently failed to claim in the original patent. The Federal Circuit held that the Orita doctrine, which prevents a reissue applicant from obtaining substantially identical claims to those of the non-elected groups, does not apply to Doyle’s reissue application.
The Court stated that Doyle’s broadened generic claims could have been prosecuted in the original application since, under In re Orita, they are linking claims. In other words, Doyle’s linking claims are neither identical to nor substantially similar to the non-elected claims, and therefore Doyle’s error is redressable by reissue.
Patent Must Clearly Disclose Structure Corresponding to the "Means," or the Doctor Can’t Cure the Indefiniteness Disease
By Keith George
The U.S. Court of Appeals for the Federal Circuit has recently held that if a patent specification fails to disclose structure clearly corresponding to the function of a means-plus-function clause, the claim is invalid for indefiniteness. Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., Case No. 01-1198 (Fed. Cir. July 11, 2002).
The one independent claim, directed to a defibrillator, listed numerous "means" elements, including detecting means, charging means and three monitoring means. The Court interpreted the functional language regarding the "third monitoring means" as requiring one structure to perform two functions, monitoring an ECG signal from the detecting means and activating a charging means in the presence of an abnormal cardiac rhythm needing correction. As disclosed, a doctor could perform both functions, but the specification did not disclose structure that was part of the defibrillator which performed both the monitoring and activating functions in the manner claimed. The Court noted that the doctor is not an element of the claimed defibrillator.
The Court explained that construction of a means-plus-function limitation involves two steps, identifying the claimed function and determining the corresponding disclosed subject matter. Ordinary principles of claim construction govern interpretation of the claim language describing the function. After identifying the claimed function, the claim interpreter must determine what structure disclosed in the specification, if any, corresponds to the claimed function. In order to qualify as corresponding structure, a structure must not only perform the stated function, but the specification must clearly associate the structure with the performance of the stated function. This inquiry is undertaken from the perspective of a person of ordinary skill in the art. Alternative embodiments may disclose different corresponding structure(s). However, at least one embodiment must disclose corresponding structure for the claim to be valid. If no disclosed embodiment discloses corresponding structure, the claim is invalid for failure to satisfy the definiteness requirement of § 112, ¶ 2.
The Court noted that as a general proposition, multiple structures can perform a single claimed function, but only where the claim language permits and only where the specification clearly identifies the multiple structures as the corresponding structure (citing In re Knowlton). However, on the facts in the Cardiac Pacemakers case, the Federal Circuit held that the claim language did not permit separate, i.e., multiple structures, to perform the dual functions recited in the particular "monitoring means" clause and that the claim therefore was invalid.
Practice Note: When drafting an application having a means-plus-function claim elements, the drafter should make sure that the specification clearly describes one or more elements of the apparatus/system as performing each stated function in each mean-plus-function claim element. When amending means-plus-function claim language, be sure that the amended functional language has clear support in the specification, i.e., that the specification clearly associates the disclosed structure with the stated claim function.
Fame of Mark Is Dominant and Possibly "Outcome- Determinative" Factor in Likelihood of Confusion Analysis
By John Dabney
The U.S. Court of Appeals for the Federal Circuit has held that the fame of the opposer’s mark, if fame exists, plays a dominant role in the likelihood of confusion analysis, and may be outcome-determinative. Bose Corp. v. QSC Audio Prods., Inc., 2002 U.S. App. LEXIS 11749 (June 14, 2002). The Court also held that fame may be established as a matter of law based on circumstantial evidence, e.g., length of use, sales and advertising figures, and media coverage, and that direct evidence of fame, e.g., surveys, is not required.
The opposer owns a federal registration for the mark for ACUSTIC WAVE for loudspeaker systems. The applicant filed an application to register the mark POWER WAVE for amplifiers. An opposition ensued and the U.S. Trademark Trial and Appeal Board awarded judgment in favor of the applicant.
The Federal Circuit reversed, finding that the Board erred in determining that there was no likelihood of confusion. The Court held that the Board had failed to give sufficient weight to the fame of the opposer’s mark. "Fame of an opposer’s mark," the Court explained, "plays a dominant role in the process of [determining whether there is a likelihood of confusion]." The Court further held that fame can be established, as a matter of law, by circumstantial evidence—direct evidence is not required. "Direct evidence of fame, for example from widespread consumer polls, rarely appears in contests over likelihood of confusion. Instead, our cases teach that the fame of a mark may be measured indirectly, among other things, by the volume of sales and advertising expenditures of the goods travelling under the mark, and by the length of time those indicia of commercial awareness have been evident."
The Court rejected the argument that the opposer’s mark, ACUSTIC WAVE, was not famous because it was used in tandem with the opposer’s famous house mark, BOSE, and that it did not possess separate trademark significance. "Whether or not a product mark, (i.e., ACUSTIC WAVE), always used with a house mark, (i.e., BOSE), possesses a separate trademark significance depends on the manner of use and the commercial impression engendered by that use." The Court found that the record, which included evidence of media coverage that had been given to the product mark ACUSTIC WAVE apart from the house mark BOSE and evidence of "considerable" advertising that decoupled the product mark ACUSTIC WAVE from the house mark BOSE, constituted "overwhelming evidence" of the independent trademark significance of the opposer’s mark ACUSTIC WAVE.
Public Use Analysis Involves Consideration of Totality of the Circumstances
By Jeffrey Woller
The U.S. Court of Appeals for the Federal Circuit recently applied a "totality of the circumstances" analysis for evaluating a public use, differentiating the analysis from that used to evaluate an on-sale bar. Netscape Communications Corp. v. Konrad, Case No. 01-1455, 2002 U.S. App LEXIS 13840 (Fed. Cir. July 9, 2002).
Allan Konrad developed a system that allows a computer user to access and search a database residing on a remote computer. Konrad admitted that his invention was reduced to practice on or about September 26, 1990, when he successfully tested his invention with a Lawrence Berkeley Laboratory staff assistant. The patent issued as a continuation from Konrad’s first application, which was filed on January 8, 1993, making the critical date for Konrad’s public use and on sale activities January 8, 1992.
Three actions taken by Konrad in 1991 were held by the Federal Circuit to invalidate his patents. First, Konrad demonstrated his invention to two University of California computing personnel, without any obligation of confidentiality. Secondly, Konrad demonstrated his invention on a remote database maintained by the Stanford Linear Accelerator Center and allowed the use of his invention on the Stanford University database, again without any confidentiality agreement. Finally, Konrad offered to make his invention for a university laboratory in exchange for four months of employment, or no more than $48,000.
In accordance with the analysis mandated by Pfaff, the Federal Circuit evaluated Konrad’s offer to sell his invention by determining whether "the invention is the subject of a commercial offer for sale, and is ready for patenting before the critical date."
However, the Federal Circuit did not apply the "ready for patenting" test to determine if there was a public use. Instead, the Federal Circuit relied upon its own precedent (citing Sinskey v. Pharmacia Ophthalmics Inc.) and applied the "totality of the circumstances" test to determine whether a public use, within the meaning of 35 U.S.C. § 102(b), was present. The relevant factors considered by the Federal Circuit included "the nature of the activity that occurred in public; the public access to and knowledge of the public use; whether there was any confidentiality obligation imposed on persons who observed the use; whether persons other than the inventor performed the testing; the number of tests; the length of the test period in relation to tests of similar devices; and whether the inventor received payment for the testing."
Patent Owner Cannot Recover Both Reasonable Royalty on Utility Patent and Infringer Profits on Design Patent for the Same Sale
Contact Paul Devinsky
The U.S. Court of Appeals for the Federal Circuit recently held that the holder of a design patent and a utility patent cannot recover both infringer profits under 35 U.S.C. § 289 and a reasonable royalty under 35 U.S.C. § 284 for the same infringing sales. Catalina Lighting, Inc. v. Lamps Plus, Inc., Case No. 01-1563 (Fed. Cir. June 28, 2002).
Lamps Plus is the owner of U.S. Patent No. 5,221,141 (the ‘141 patent), a utility patent for a "tree torchiere," a stand-alone electric lamp having a general area light source at the top of a stem as well as a plurality of adjustable light sources affixed to the stem for providing task lighting directed to specific areas. Lamp Plus also owns U.S. Design Patent No. 353,904 (the ‘904 patent), for the ornamental design of a "Combined Torchiere Lamp and Adjustable Accent Lamps." Lamps Plus sells tree torchieres through its retail stores and through a third-party wholesaler, Pacific Coast Lighting. Catalina Lighting also manufactures lamps that are sold to Home Depot for resale.
Lamps Plus and Pacific Coast sued Home Depot and Catalina, claiming infringement of both the design patent and the utility patent. After trial, the jury returned a special verdict form finding that Catalina infringed the ‘141 patent and owed a reasonable royalty of $660,000; Catalina infringed the ‘904 patent and owed damages of $275,194, equaling Catalina’s profits; Home Depot infringed the ‘141 patent and owed reasonable royalty of $630,190; Home Depot infringed the ‘904 patent and owed damages of $492,748, equaling Home Depot’s profits; and that Home Depot and Catalina’s infringement was willful. The Court entered judgment in accordance with the jury’s verdict but modified the damages award of the ‘141 patent, replacing the jury’s award with a single award of $660,000 for which Catalina and Home Depot were jointly and severally liable.
On appeal, Catalina argued that Lamps Plus was not entitled to recover a reasonable royalty for infringement of the utility patent as well as infringer profits for infringement of the design patent. The Federal Circuit noted that a design patentee may recover damages under §284 or §289, but may not recover both. The Court recognized that while §289 prohibits a double recovery of infringer profits, it does not directly address whether an additional remedy may be recovered when both a design patent and a utility patent have been infringed. The Court resolved the issue by focusing on the infringing sales. Since each sale was the basis for the infringement of both the ‘904 and ‘401 patents, the Court held that once the patent owner receives infringer profits under §289, it was not entitled a further recovery from the same sale. According to the Court, the award of infringer profits under §289 also constitutes "damages adequate to compensate for the infringement" under §284. It went on to state "… the recovery of infringer profits resulting from the single act of selling lamps satisfies Lamp Plus’s entitlement under §289 and more than satisfies its entitlement under §284."
Partial Summary Judgment May Not Be "Final" for Purposes of Collateral Estoppel If Claim Mooted Before Trial
By Todd Mobley
The grant of partial summary judgment of non-infringement in a prior action did not necessarily preclude the plaintiff from bringing a later action against the same defendant for infringement of a reissue of the previously adjudicated patent. Vardon Golf Company, Inc., Karsten Mfg. Corp., Case No. 01-1557, 2002 U.S. App. LEXIS 12353 (Fed. Cir. June 21, 2002).
In Vardon I, Vardon accused Karsten of infringing two patents. Before suing, Vardon had filed a reissue application on the patent in suit. After the district court granted the Karsten’s motion for partial summary judgment of non-infringement on the patents, the U.S. Patent Trademark Office (PTO) granted reissue. To receive the reissue patent, Vardon surrendered the original patent, thereby mooting any potential appeal of the summary judgment of no infringement.
In Vardon II, Vardon again sued Karsten, this time for infringement of the reissue patent. The district court found that the asserted claims in the reissue patent were identical to those adjudicated in Vardon I and ruled that Vardon was collaterally estopped from bringing the same claim again.
On appeal, Karsten argued that the prior judgment was final for purposes of collateral estoppel because the plaintiff could have suspended the reissue proceedings, substituted the reissue patent at the appropriate time, or certified the district court’s decision on the original patent for appeal. Vardon argued that its failure to preserve its "theoretical" appellate rights on the partial summary judgment in Vardon I did not make an otherwise nonfinal and unappealable judgement "final" for collateral estoppel purposes.
The Federal Circuit reversed. Applying Seventh Circuit law, the Federal Circuit found that the grant of partial summary judgment was not final for purposes of collateral estoppel since the prior ruling never reached the state where it was "immune . . . to reversal or amendment," because it had been rendered moot and neither party had sought to have the partial summary judgement certified under Rule 54(b).
