IN THIS ISSUE
Patents/All Elements Rule- More than One Way to Skin a Patent Under DOE: Vitiation in Lieu of Estoppel
Patents/Claim Construction- Means-Plus-Function: What’s the Corresponding Structure?
Patents/Inequitable Conduct- PCR Taq Polymerase Patent Obtained as a Result of Inequitable Conduct, But Is it Enforceable?
Patents/Claim Construction- Drug Patent Not Infringed Based on Deference to Patentee as Lexicographer
Copyright/Infringement- Merger and Scenes à Faire Doctrines Yield "Thin" Copyrights
Copyright/Infringement- Without Side-by-Side Comparison Copyright Owner Cannot Prove Infringement
Copyright/Registration- Registration of Clip Art Compilation Protects Underlying Works as Well
Patents/Written Description- Written Description: It Isn’t Just for Priority Anymore
Patents/Claim Construction- Claim Construction Error and Factual Dispute Precludes Summary Judgment
- Patents/Prior Art- An Earlier Patent Naming Some (But Not All) Inventors in Common with Later Case May Not Be Invention "By Another"
Patents- New Procedures for Applicant Initiated Interviews at the USPTO
Patents/All Elements Rule
More than One Way to Skin a Patent Under DOE: Vitiation in Lieu of Estoppel
Please contact Paul Devinsky
In a spring 2001 decision, the U.S. Court of Appeals for the Federal Circuit affirmed a summary judgment of no doctrine of equivalents infringement of a Lockheed Martin satellite control patent by Space Systems/Loral (SSL), in view of an amendment based estoppel. Lockheed Martin Corp. v. Space Systems/Loral, Inc. In that 2001 decision, the Federal Circuit applied the Festo absolute bar rule. The U.S. Supreme Court, which had already granted certiorari in Festo, granted certiorari in Lockheed-Martin as well. After reversing Festo, the Supreme Court sent the Lockheed Martin case back to the Federal Circuit "for further consideration in light of" the Supreme Court’s Festo decision. Now, on remand, the same three-judge Federal Circuit panel has again affirmed the district court summary judgment of no doctrine of equivalents infringement, but this time based on an issue not addressed in the earlier decision: the "all elements" or "all limitations" rule. Lockheed Martin Corp. v. Space Systems/Loral, Inc., Case No. 00-1310 (Fed. Cir. Mar. 24, 2003).
The Federal Circuit noted that the remand by the Supreme Court did not necessarily require it to revisit the Festo estoppel issue. Rather, in the panel’s view the case on remand stands in the same posture as at the time it first reached the Supreme Court. In its new decision, the panel chose not to resolve the estoppel issue but, instead, to decide the appeal on another ground: the "all elements" or "all limitations" rule.
The patented system compensates for angular drift of geosynchronous satellites by manipulation of speed and angular momentum of a momentum wheel, having an axis parallel to the yaw axis of the satellite (pointing toward the center of the earth), so as to tilt the satellite and keep it continuously pointed at a target on the earth’s surface. The claimed system included an element specified as a "means for rotating said wheel in accordance with a predetermined rate schedule, which varies sinusoidally over the orbit at the orbital frequency of the satellite." The new panel decision focused on two functional limitations on this "means" element, the predetermined rate schedule and the sinusoidal variation.
The lower court interpreted the sinusoidal variation limitation to mean that the speed variation passes through zero and changes direction or sign. The parties apparently did not dispute this interpretation. While the wheel in the SSL satellite varies its speed, it does so with respect to a bias speed and, consequently, does not pass through zero, i.e., does not change direction or sign.
Also, the Federal Circuit adopted the lower court interpretation of the "predetermined" limitation requiring that the sinusoidal control function "does not include any unfixed real-time inputs," such as those from an earth sensor. The rate schedule used in the SSL satellite control responds to an actual real-time error sensed by an earth sensor. Over arguments by Lockheed regarding the open-ended nature of the claim, the Federal Circuit concluded that the accused satellite control did not utilize a "predetermined" rate schedule.
Finally, despite expert testimony as to the overall equivalence between the recited function as construed by the Federal Circuit and the function performed by SSL satellite, the court concluded that there was no element that performs the properly construed function, and, therefore, that the claimed "means" element was entirely missing from the SSL satellite. The Federal Circuit held that a finding of infringement by equivalents, in the absence of operations that literally satisfies the two functional requirements, would "entirely vitiate the limitations" of the "means for rotating" claim element.
Means-Plus-Function: What’s the Corresponding Structure?
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The U.S. Court of Appeals for the Federal Circuit recently reversed a district court’s construction of two means-plus-function claim elements because the construction improperly included not only the circuit, but also the signals that the circuit used to perform the claimed function. Northrop Grumman Corp. v. Intel Corp. et al., Case Nos. 02-1024,-1184 (Fed. Cir. Mar. 31, 2003).
The claims at issue recite a bus interface unit used in a computer network. The bus interface unit, as recited in the claims, included, in part, a "means for monitoring a plurality of logical signals" and a "means for defining the functional state of the bus interface units." In construing each of these elements as means-plus-function limitations, the district court first identified the function performed by each claim element and then identified the corresponding disclosed structure that performed that recited function. More particularly, the district court found that the "monitoring means" performed two functions: monitoring the logical signals that define the operational status of the bus interface unit and generating control signals that regulate a data transfer process. Then, focusing on a passage in the specification to discern the corresponding structure, the district court identified a sequence logic circuit that receives a set of signals to regulate the data transfer process between the bus and the memory port as the corresponding structure. Similarly, the district court included both a logic sequence circuit and a particular signal as the corresponding structure for the claimed "defining means."
The Federal Circuit reversed, finding that the district court improperly included signals in the corresponding structure for performing the "monitoring" and "defining" functions. The Federal Circuit reasoned that "the signals that are monitored by the ‘means for monitoring’ cannot be part of the structure that does the monitoring." Accordingly, the Federal Circuit held that the sequence logic circuit was the only structure that fell within the scope for "means for monitoring" and "means for defining."
Based upon the new claim construction, the Federal Circuit reversed the district court and remanded the case for an infringement determination.
PCR Taq Polymerase Patent Obtained as a Result of Inequitable Conduct, But Is it Enforceable?
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The U.S. Court of Appeals for the Federal Circuit, affirming several basis on which the district court found inequitable conduct, remanded the case for a determination as to whether the incidents of inequitable conduct justify the sanction of unenforceability. Hoffman-La Roche, Inc. v. Promega Corporation, Case No. 00-1372 (Fed. Cir. Mar. 31, 2003).
U.S. Patent No. 4,889,818 (the `818 patent) is generally directed to enzymes used in DNA replication, termed "DNA polymerases," and specifically to a Thermus aquaticus bacterium enzyme, or "Taq polymerase." Hoffman-La Roche, Inc. (Roche) alleged that Promega Corporation (Promega) breached an agreement licensing the `818 patent to Promega and that, thereafter, Promega was infringing the `818 patent. Promega counterclaimed, alleging the `818 patent was unenforceable due to inequitable conduct. The district court declared the `818 patent unenforceable based on eight separate material representations and omissions, three of which were addressed in the summary judgment stage and the rest after a bench-trial.
The panel majority reviewed the district court’s finding of inequitable conduct using the clear error standard, stating the "findings on materiality and intent … will not be overturned in the absence of a ‘definite and firm conviction’ that a mistake has been made." Parsing through the eight issues one-by-one, the Federal Circuit reversed some and affirmed others.
The Court considered the three categories of issues: representations that the molecular weight of the claimed enzyme was different than in the prior art; representations that an example disclosed in the patent had actually been performed and had yielded the described results; and representations that the fidelity and template dependence were different than in the prior art.
Regarding the first category, the Court determined the district court’s finding that an omission was material as a matter of law on summary judgment was impermissible because undisputed facts indicated that genuine issues of material fact existed. The Court further found clear error in the finding of intent, because there was unrebutted proof that the inventors believed the non-disclosed information was irrelevant to their statements made during prosecution. Likewise, the Court reversed findings that various other non-disclosed information was material, either because there was no proof that supported materiality or there was unrebutted proof to the contrary.
Regarding the second and third categories, the Court upheld various findings of the district court that had been made based on the clear and convincing standard. The Court upheld the district court determination that the inventors made misrepresentations, finding that the patentee did not meet "its burden of demonstrating that the district court clearly erred in [so] determining." In upholding various other findings of misrepresentation, the Court explained that the findings were supported by evidence of record and were not clearly erroneous. Additionally, the Court found no clear error in the district court’s finding of materiality because Roche failed to show that the misrepresentation would not have been important to a reasonable examiner.
Finally, the Court noted that "[o]nce the requisite levels of materiality and intent are shown, the district court must determine whether the equities warrant a conclusion that the patentee engaged in inequitable conduct." Here, the Federal Circuit remanded the case to the trial court to determine, in its discretion, whether the material misstatements or omissions "are sufficiently serious in light of the evidence of intent to deceive … to warrant the severe sanction of holding the patent unenforceable."
Judge Newman vociferously dissented on "clear error" standard of review, arguing that the majority casts aside the safeguard previously established by the Court through the requirement that material misrepresentation and intent to deceive be shown by clear and convincing evidence. She noted that this requirement was established in response to "the past ‘plague’ of charges of ‘inequitable conduct’" and cautions that this decision may bring a similar "new plague." In Judge Newman’s view, the arguments by Promega were illustrative of a "litigation tactic," insisting that "clear and convincing" standard of proof should be used both at trial and on review.
Drug Patent Not Infringed Based on Deference to Patentee as Lexicographer
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The U.S. Court of Appeals for the Federal Circuit, in a case that turned on the narrow construction given to one of the claim terms, affirmed a grant of summary judgment that a generic fenofibrate composition did not infringe Abbott Laboratories’ patent for a therapeutic fenofibrate composition sold under the brand name Tricor. Abbott Laboratories v. Novopharm Limited, Case No. 02-1387 (Fed. Cir. Mar. 20, 2003).
Tricor (with sales totaling $403 million in 2002) is used to treat high cholesterol. Novopharm filed an Abbreviated New Drug Application (ANDA), seeking U.S. Food and Drug Administration (FDA) approval to market a generic micronized formulation of fenofibrate before the expiration of Abbott’s patent. Novopharm argued to the FDA that its proposed formulation would not infringe the Abbott patent. Abbott sued for infringement, seeking to stay FDA approval. In granting Novopharm summary judgment of non-infringement, the district court construed the claim term "co-micronization" to require micronization of fenofibrate and a solid surfactant "in the absence of other excipients." (Micronization is the process of reducing something to particles of only a few microns in diameter. An excipient is an inert substance used as a vehicle for a drug.) Novopharm argued that its process does not include co-micronization of fenofibrate and a solid surfactant. Abbott appealed.
The Federal Circuit, while observing that the ordinary meaning of the "co-micronization" did not necessarily exclude the presence of ingredients not specifically recited in the claim, it nevertheless found that by explicitly defining the term "co-micronization" as "micronization of an intimate mixture of fenofibrate and a solid surfactant," the inventor had "chosen to be his own lexicographer." Accordingly, the Court found that claims at issue require co-micronization of a mixture consisting essentially of only fenofibrate and a solid surfactant. "Had that term not been explicitly defined in the patent specification, we might agree with appellants that term… would not necessarily exclude the presence of ingredients not specifically recited in the clam." Since it is undisputed that fenofibrate and a solid surfactant are not mixed in Novopharm’s process without the presence of other significant ingredients, the Federal Circuit held that "there is no genuine issue of material fact as to literal infringement in this case."
The Federal Circuit also affirmed the finding of no infringement under the doctrine of equivalents, noting particularly that the process described in Novopharm’s ANDA does not include any step in which fenofibrate and a solid surfactant are present in a mixture, irrespective of the presence or absence of other excipients. The Federal Circuit concluded that holding otherwise would vitiate the claim limitation altogether in contravention of the all-elements rule, which requires all claim elements to be either literally or equivalently present in the infringing product or process before infringement will be found.
Practice Note: This case underscores the importance of defining claim terms carefully, or not at all. When construing claim terms in litigation, the court is only likely to depart from the ordinary meaning rule where the written description contains a clear statement that defines the term.
Merger and Scenes à Faire Doctrines Yield "Thin" Copyrights
By Daniel Foster
In decisions issued six days apart, two panels of the U.S. Court of Appeals for the Ninth Circuit addressed the scope of copyright protection in instances where ideas and standard elements predominate over individual expression. In both cases, the Ninth Circuit found the works to be only entitled to "thin" protection, and only infringed where the accused work is a virtually identical copy.
The first case, Ets-Hokin v. Skyy Spirits Inc., Case Nos. 01-17411, 02-15126, 2003 U.S. App. LEXIS 4510 (9th Cir. Mar. 14, 2003), involved commercial advertising photographs of a blue Skyy vodka bottle. The plaintiff-photographer, Ets-Hokin, had claimed Skyy had violated his copyright in a series of photographs he had taken for a Skyy advertising campaign by later using similar photographs shot by another photographer.
In an earlier decision in this same case, the Ninth Circuit held that Ets-Hokin met the minimal threshold of originality required for copyright protection. On remand, however, the district court entered summary judgment of "no infringement" in favor of Skyy. In affirming entry of summary judgment, the Ninth Circuit applied the doctrines of merger and scenes à faire. Quoting from its earlier decision in this case, the Ninth Circuit observed that "[u]nder the merger doctrine, courts will not protect a copyrighted work from infringement if the idea underlying the work can be expressed only in one way, lest there be a monopoly on the underlying idea. In such an instance, it is said that the work’s idea and expression ‘merge.’ Under the related doctrine of scenes à faire, courts will not protect a copyrighted work from infringement if the expression embodied in the work necessarily flows from a commonplace idea… ."
Applying these principles to the current dispute, the Ninth Circuit concluded that "[t]hough the Ets-Hokin and Skyy photographs are indeed similar, their similarity is inevitable, given the shared concept, or idea, of photographing the Skyy bottle. When we apply the limiting doctrines, subtracting the unoriginal elements, Ets-Hokin is left with only a ‘thin’ copyright, which protects against only virtually identical copying." Skyy’s photographs were not infringing since they were not identical to those of Ets-Hokin, but differed in lighting, angles, shadows, reflections and background. Indeed, the only constant was the bottle itself.
In the second case, Satava v. Lowry, Case No. 02-16347, 2003 U.S. App. LEXIS 5380 (9th Cir. Mar. 20, 2003), the Ninth Circuit vacated an injunction preventing a sculptor from selling allegedly infringing glass-in-glass sculptures of jellyfish. The copyrighted sculptures were described as "a vertically oriented, colorful, fanciful jellyfish with tendril-like tentacles, and a rounded bell encased in an outer layer of rounded clear glass that is bulbous at the top and tapering toward the bottom to form roughly a bullet shape, with the jellyfish portion of the sculpture filling almost the entire volume of the outer, clear glass shroud." The alleged infringer’s sculptures were virtually identical and, in fact, he admitted that he reviewed photographs and examined a specimen of the copyrighted sculptures.
Applying the scenes à faire doctrine, and citing to the previous week’s decision in Ets-Hokin, the Court found that "no copyright protection may be afforded to the idea of producing a glass-in-glass jellyfish sculpture or to elements of expression that naturally follow from the idea of such a sculpture." Moreover, the Court concluded that those aspects of the sculptures resulting from jellyfish physiology, as well as those resulting from the glass-in-glass methods employed by Satava, were commonly used, part of the public domain and unprotectable. "[A] combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship." The Satava sculpture did not meet this standard and "lack[ed] the quantum of originality needed to merit copyright protection."
To the extent that Satava made copyrightable contributions, such as varying the pose, background or other features, he could protect others from copying the original features he contributed. Otherwise, as with Ets-Hokin, what Satava possessed was simply "a thin copyright that protects against only virtually identical copying."
Without Side-by-Side Comparison Copyright Owner Cannot Prove Infringement
By Paul Devinsky
The U.S. Court of Appeals for the Fifth Circuit has ruled that a plaintiff’s failure to produce a copy of the copyrighted work, thus preventing a side-by-side comparison with the alleged infringement, precludes an infringement claim¾evidence of direct copying notwithstanding. Bridgmon v. Array Systems Corp., Case Nos. 01-10367, 01-10703, (5th Cir. Mar. 20, 2003).
Bridgmon authored the ADS computer program, for which he obtained a copyright registration. Array was licensed to use and sublicense certain software known as ICUS under a license agreement between Bridgmon’s company, ICU Technology Corporation, and Array. Bridgmon later notified Array of nonpayment of royalties under that agreement and terminated the license. Bridgmon then filed suit, alleging that Array’s unlicensed use and distribution of ICUS constituted copyright infringement. However, Bridgmon was unable to produce a copy of the ADS software. The only evidence of its content consisted of Bridgmon’s oral testimony and a reconstruction of the ADS code created by Array’s expert witness. The Fifth Circuit found, as a matter of law, that "[t]his evidence was insufficient to create a genuine issue of material fact as to whether ADS and ICUS are ‘substantially similar.’" Quoting from the 1997 Fifth Circuit decision in Creations Unlimited v. McCain, the court noted that "a side-by-side comparison must be made between the original and the copy to determine whether a layman would view the two works as ‘substantially similar.’"
The court had little trouble with Bridgmon’s contention that he need not produce evidence of substantial similarity between the copyrighted software and the software used by Array because there is evidence of direct copying, noting that not all copying "constitutes legally actionable copyright infringement." The court noted, moreover, that Fifth Circuit law "prohibits finding copyright infringement without a side-by-side comparison of the two works."
Registration of Clip Art Compilation Protects Underlying Works as Well
By Paul Devinsky
Reversing a district court summary judgment, the U.S. Court of Appeals for the Fourth Circuit has now held that the compilation copyright registration for two software clip-art packages was sufficient to provide copyright protection to the underlying preexisting works in the compilations where the registrant was the owner of both the compilation and the underlying work. Xoom Inc. v. Imageline Inc., Case No. 02-1121 (4th Cir. Mar. 21, 2003).
Imageline introduced SuperBundle on CD-ROM in 1994. SuperBundle contained 1,580 individual electronic clip-art images. In 1996, Imageline registered the art, text and packing design for CD-ROM and diskette media with the U.S. Copyright Office. While the registration contained no specific mention of the individual clip-art images, Imageline deposited printed and electronic copies of each clip-art image with its registration application.
Xoom began distributing a CD product called Web Clip Empire 50,000 in 1997. That product contained 50,000 software clips, including clip-art images, and the company later began to distribute its clip-art products through its website and through third parties who market the products to end-users. Some of the images used in the Web Clip Empire Products were designed by commissioned artists, while other images were licensed to Xoom by third parties.
In 1998, Imageline sent a letter to Xoom advising that it was infringing Imageline’s copyrights by sublicensing certain Imageline clip-art images to other software publishers, including certain Imageline clip-art images in Xoom’s own CD software products, and making certain Imageline clip-art images available for free downloading from Xoom’s website.
Xoom filed suit against Imageline in district court, seeking, inter alia, declaratory relief that the individual clip-art images were not registered. Imageline counterclaim for copyright infringement. The district court granted partial summary judgment in favor of Xoom.
The central issue was whether Imageline effectively registered its copyright in the materials it claims Xoom infringed. The district court found that Imageline had no basis for litigating claims of infringement with respect to the individual images because, as registered, the copyright claims were only in the works as a whole and not in the individual images. Imageline asserts that its copyright registration extended to the individual clip-art images and to the computer programs used to create those images.
Citing with approval to the 2001 Second Circuit decision in Morris v. Bus. Concepts, Inc., the Fourth Circuit panel held "that where an owner of a collective work also owns the copyright for a constituent part of that work, registration of the collective work is sufficient to permit an infringement action of the constituent part."
Adopting the rational of Morris, the Fourth Circuit held "that because Imageline owned copyright in SuperBundle … and in the underlying works…, its registration … was sufficient to permit an infringement action on the underlying parts, whether they be new or preexisting."
Imageline also asserted its copyright in the computer programs that created the images, contending that because the clip-art images are perceptible when printed in a two-dimensional format, it was only required to submit the visual arts registration form (Form VA), not the source code that is normally required to obtain copyright in a computer program.
The Fourth Circuit rejected this argument, finding that there is no evidence that the computer programs were registered in accordance with the Copyright Office Circular 61, which requires the applicant to deposit computer source code in order to obtain copyright in computer programs.
Practice Note: After quoting from and adopting the holding of the Second Circuit in Morris, the court presents a footnote (footnote 5) stating: "We do not conclude that the registration of the [compilations] constituted an effective registration of the underlying preexisting works." As the present case is postured as an appeal from a summary judgment determination, that footnote, which is facially inconsistent with the holding of the court, is likely intended to indicate that the effectiveness of the compilation registration as it pertains to individual pieces of clip art, is a factual issue for the district court to consider on remand consistent with the rule that where the registrant is the owner of both the compilation and the underlying work, registration of the compilation is sufficient to protect a preexisting, underlying work.
Written Description: It Isn’t Just for Priority Anymore
By Paul Devinsky
Heralding a possible en banc consideration of the written description rule from the 1997 Eli Lilly case, and further eroding that rule, the U.S. Court of Appeals for the Federal Circuit affirmed denial of a motion for judgment as a matter of law (JMOL) of a jury verdict of validity in a case where claims to an egg sorting machine were construed to cover a conveyor design that was not illustrated or described in the written description of the patent in suit. Moba, B.V. and FPS Foodprocessing Systems, Inc. v. Diamond Automation, Inc., Case No. 01-1063, 01-1083 (Fed. Cir. April 1, 2003).
The patent in suit is directed to an egg sorter. Foodprocessing Systems, Inc. (FPS) contended that if the conveyer element of the patent claims was construed to encompass lif