Alston & Bird LLP's weekly Federal Circuit Patent Case Summaries are published by Wolters Kluwer Law & Business as part of its Aspen Publishers product line. The following is a summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit for the week ending on the date below.
Patent Case Summaries for the Week Ending August 3, 2012
Labriah Lee and Ross Barton prepared the summaries in this issue.
Case Summaries
Claim Interpretation: Intrinsic Evidence: Prosecution Disclaimer
Litigation Practice and Procedure: Jurisdiction: Personal Jurisdiction
Grober, et al. v. Mako Products, Inc., et al., Nos. 10-1519, -1527 (Fed. Cir. (C.D. Cal.) July 30, 2012). Opinion by Rader, joined by Prost and Moore.
Affirming-in-part and vacating-in-part the district court’s summary judgment of noninfringement and ruling on personal jurisdiction, the Federal Circuit held that the district court erred in its claim construction of the term “payload platform.” The court ruled that statements made during reexamination must clearly and unmistakably disclaim a broader meaning of the patent at issue, and there was no such disclaimer here. The court also affirmed the district court’s dismissal of certain parties for lack of personal jurisdiction.
David Grober (“Grober”) invented a platform that stabilizes a camera for filming motion pictures from moving vehicles, which is known in the entertainment industry as the Perfect Horizon. For this technology, Grober received U.S. Patent No. 6,611,662 (“the ’662 patent”), entitled “Autonomous Self Leveling, Self Correcting Stabilized Platform.” Grober and Voice International, Inc. sued Mako Products, Inc. and others for infringement by a movie stabilization device called MakoHead. The district court held a Markman hearing and construed the claim term “payload platform,” and based on this interpretation, ruled sua sponte that the MakoHead did not infringe the ’662 patent.
On appeal, the Federal Circuit ruled that the district court erred in limiting its construction of “payload platform” to require a horizontal plate or surface. The court ruled that certain statements made during reexamination of the ’662 patent were not an unambiguous disavowal that clearly and unmistakably disclaimed claim scope or meaning. Thus, Grober’s statements did not narrow the meaning of the patent, and the court therefore found no reason to limit the claim term “payload platform” to a “horizontal surface.” The Federal Circuit thus construed “payload platform” more broadly as “a three-dimensional structure upon which the payload (e.g., a camera) is directly mounted upon or affixed to.” The court thus vacated the district court’s grant of summary judgment of noninfringement and remanded the issue for further proceedings.
The Federal Circuit next ruled that the district court properly dismissed certain other parties for lack of personal jurisdiction, as Grober had not made a prima facie showing of general or specific jurisdiction as to these parties.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1519%20-1527.pdf
Claim Interpretation: Intrinsic Evidence: Specification
Claim Interpretation: Intrinsic Evidence: Prosecution Disclaimer
01 Communique Laboratory, Inc. v. LogMeIn, Inc., No. 11-1403 (Fed. Cir. (E.D. Va.) July 31, 2012). Opinion by Fogel (sitting by designation), joined by Rader and Wallach.
Because the district court erred in construing the claim term “location facility,” the Federal Circuit vacated and remanded the district court’s award of summary judgment that LogMeIn, Inc. (“LogMeIn”) did not infringe U.S. Patent No. 6,928,479 (“the ’479 patent”).
01 Communique Laboratory, Inc. (“01 Communique”) sued LogMeIn for infringement of the ’479 patent, which relates to technology that enables one computer to access another computer remotely via the Internet. The patent discloses use of a “locator server computer” as an intermediary between a “remote computer” (the computer seeking access) and a “personal computer” (the computer to be accessed). The locator server computer includes software that locates the personal computer. The patent refers to this software as a “location facility.”
LogMeIn develops and markets remote access products. The district court determined that all of the asserted claims of the ’479 patent require “a ‘locator server computer’ that ‘includes a location facility.’” Relying upon a perceived disclaimer in the prosecution history, the court determined that a location facility must be contained on a single physical computer. Based on this construction, the district court granted summary judgment of noninfringement to LogMeIn.
On appeal, the Federal Circuit analyzed “whether the location facility must be contained entirely on a single locator server computer as held by the district court and asserted by LogMeIn, or whether it may be distributed among multiple locator server computers as asserted by 01 Communique.” The court ruled that the patent’s use of words such as “a,” “its,” and “the” in the claims is insufficient to limit the meaning of “locator server computer” to a single physical computer. The specification also stated that “Server Computer 12 may comprise one or more computers, as is well known.” Further, the Federal Circuit ruled that statements made by 01 Communique’s expert during reexamination of the ’479 patent did not disclaim distribution of the location facility among multiple computers. Also, 01 Communique’s cancellation of a particular claim following a rejection by the examiner did not effectively disclaim a subdivided location facility that is distributed among multiple computers, as contended by LogMeIn. The Federal Circuit thus altered the district court’s construction of “location facility” to allow for distribution among multiple locator server computers, vacated the summary judgment of noninfringement, and remanded.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/11-1403.pdf
Claim Interpretation: Ordinary Meaning
Claim Interpretation: Claim Differentiation
Litigation Practice and Procedure: ITC Practice and Procedure: Domestic Industry
InterDigital Communications, LLC, et al. v. International Trade Commission, et al., No. 10-1093 (Fed. Cir. (I.T.C.) Aug. 1, 2012). Opinion by Bryson, joined by Mayer. Dissenting opinion by Newman.
The Federal Circuit reversed the International Trade Commission’s (“ITC”) finding that Nokia Inc. and Nokia Corporation (collectively “Nokia”) did not infringe certain patents and remanded the case to the ITC for further proceedings. The Federal Circuit held that the ITC misconstrued two claim terms, and rejected Nokia’s argument that the “domestic industry” requirement in ITC investigations requires demonstration of an article protected by the patent.
InterDigital Communications, LLC and InterDigital Technology Corporation (collectively “InterDigital”) appealed an order of the ITC finding that InterDigital’s patents were not infringed by Nokia. The patents in suit, U.S. Patent Nos. 7,190,966 (“the ’966 patent”) and 7,286,847 (“the ’847 patent”), are directed to wireless cellular telephone technology and are both entitled “Method and Apparatus for Performing an Access Procedure.” The ’966 patent and ’847 patent share a common specification and generally relate to controlling a mobile device’s transmission power during the “handshake” portion of a wireless cellular communication, which is the portion of the communication in which a cellphone establishes contact with a cellular base station.
On appeal, the Federal Circuit concluded that the ITC erred in its construction of the claim terms “code” and “increased power level.” With respect to the claim term “code,” the Federal Circuit found that the ITC erred in construing the term as a “spreading code,” in part because a dependent claim stated that “the same code is a spreading code.” According to the Federal Circuit, this provided a “powerful argument” based on the doctrine of claim differentiation that the term “code” includes, but is not limited to, spreading codes. The Federal Circuit determined the term should have been construed in accordance with its plain meaning, which it identified as “a sequence of bits (if the ones and zeros are transmitted at the ‘data rate’) or chips (if the ones and zeros are transmitted at the faster ‘chip rate’).” The Federal Circuit also reversed the ITC’s construction of the phrase “increased power level” and concluded that the ITC’s construction, which required a continuous increase in transmission power as opposed to merely increasing transmission power while the mobile is not transmitting, improperly restricted the claim term. In observing that the plain and ordinary meaning of the term encompassed both continuous and stepped power increases, the Federal Circuit concluded that the lack of a clear restriction in the specification warranted reversal of this construction.
The Federal Circuit also addressed and ultimately rejected Nokia’s argument that InterDigital’s patent licensing activities did not satisfy the “domestic industry” requirement of 19 U.S.C. § 1337(a)(2) and (3). Nokia argued that, although § 1337(a)(3)(C) provides for establishment of a domestic industry based on “substantial investment in its exploitation, including . . . licensing,” InterDigital was nonetheless required to establish that there is a domestic industry “relating to the articles protected by the patent” pursuant to the language of § 1337(a)(3). In rejecting Nokia’s argument, the Federal Circuit relied upon the legislative history of the statute, noting that the “licensing” language of § 1337(a)(3) was added to overrule earlier ITC decisions. Further, the Federal Circuit concluded that, to the extent there is any ambiguity as to the statute, the ITC’s consistent interpretation of the statute is entitled to Chevron deference.
Judge Newman dissented from the majority’s reversal of the ITC’s construction of the term “code,” stating that the panel majority gave no weight to the ITC’s factual findings. Judge Newman explained that, “The meaning created for ‘code’ by the panel majority is unsupported by and outside of the specification, where the majority’s definition is neither described nor enabled.” Noting that only spreading codes and short spreading codes are shown in the specification, Judge Newman also explained that the majority’s reliance on the doctrine of claim differentiation was improper because the doctrine cannot be used to enlarge the meaning of claim terms beyond their use in the specification to describe the invention.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1093.pdf
Infringement: Hatch-Waxman Act
Remedies: Injunctions: Preliminary Injunction
Momenta Pharmaceuticals, Inc., et al. v. Amphastar Pharmaceuticals, Inc., et al., Nos. 12-1062, -1103, -1104 (Fed. Cir. (D. Mass.) Aug. 3, 2012). Opinion by Moore, joined by Dyk. Dissenting opinion by Rader.
Ruling that the district court applied an unduly narrow interpretation of the Hatch-Waxman safe harbor, 35 U.S.C. § 271(e)(1), the Federal Circuit vacated a grant of a preliminary injunction and remanded. The Federal Circuit held that the scope of the safe harbor “does not stop at activities reasonably related to development of information submitted in an” abbreviated new drug application (“ANDA”). The court explained that “the safe harbor applies ‘to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.’ As long as the allegedly infringing use is ‘for uses reasonably related’ to the development and submission of that information it is not an act of infringement, regardless of where that requirement resides in the law.”
The case involved a generic version of Lovenox (enoxaparin), a drug that prevents blood clots. Amphastar Pharmaceuticals, Inc. and others (collectively “Amphastar”) were the first to file an ANDA for a generic version of enoxaparin, while Momenta Pharmaceuticals, Inc. and Sandoz, Inc. (collectively “Momenta”) were the first to bring generic enoxaparin to the marketplace. Momenta received FDA approval to market enoxaparin more than a year before Amphastar’s approval, and two days after Amphastar received its approval, Momenta initiated the present litigation as the assignee of U.S. Patent No. 7,575,886 (“the ’886 patent”). Momenta alleged that Amphastar infringed the ’886 patent by manufacturing generic enoxaparin for commercial sale using methods claimed in the patent. The district court granted Momenta a temporary restraining order and, thereafter, a preliminary injunction. The court denied Amphastar’s emergency motions for relief from the preliminary injunction.
On appeal, Amphastar argued that its activities fall within the scope of the Hatch-Waxman safe harbor, 35 U.S.C. § 271(e)(1). The Federal Circuit ruled that the district court took an unduly restrictive view of the safe harbor, stating: “Congress could not have been clearer in its choice of words: as long as the use of the patented invention is solely for uses ‘reasonably related’ to developing and submitting information pursuant to ‘a Federal law,’ regulating the manufacture, use, or sale of drugs, it is not ‘an act of infringement.’” The court noted that unlike the closely related infringement provision, 35 U.S.C. § 271(e)(2), Congress did not link the safe harbor to the submission of an application for approval under the Federal Food, Drug, and Cosmetic Act. The court thus held that the scope of the safe harbor “does not stop at activities reasonably related to development of information submitted in an ANDA. Instead, the safe harbor applies ‘to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.’ As long as the allegedly infringing use is ‘for uses reasonably related’ to the development and submission of that information it is not an act of infringement, regardless of where that requirement resides in the law.”
Under this framework, the Federal Circuit ruled that Momenta could not establish a likelihood of success on infringement, and thus vacated the preliminary injunction. The Federal Circuit suggested that, on remand, the district court may want to consider whether an admission made by Momenta that Amphastar’s use of the patented invention was to “satisfy the FDA’s requirements” makes the case amenable to summary judgment in favor of Amphastar.
Chief Judge Rader dissented, asserting that the majority decision was in direct conflict with the court’s decision in Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011), and the purpose of the safe harbor provision as explained in the legislative history. Judge Rader described that the Supreme Court’s opinions in Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 1047 (1990), and Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. 193 (2005), support the holding in Classen and do not support the majority’s decision. Judge Rader also observed that the court’s interpretation of the § 271(e)(1) safe harbor could render manufacturing method patents worthless.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1062.pdf
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