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 April 5, 2013. Lindsey Yeargin and Ross Barton prepared this edition.
Claim Interpretation: Intrinsic Evidence: Importing Limitations from the Specification into Claims
Claim Interpretation: Intrinsic Evidence: Prosecution Disclaimer
Claim Interpretation: Means-Plus-Function
Litigation Practice and Procedure: Procedure: JMOL Procedure
Saffran v. Johnson & Johnson, et al., No. 12-1043 (Fed. Cir. (E.D. Tex.) Apr. 4, 2013). Opinion by Lourie, joined-in-part by Moore and O’Malley. Opinions concurring-in-part by Moore and O’Malley.
In reversing the district court’s judgment of infringement, the Federal Circuit reaffirmed that when construing claims, language in the patent specification and a patentee’s statements during prosecution can limit the scope of a claim. Further, the Federal Circuit observed that a structure disclosed in the specification is a corresponding structure to a means-plus-function claim only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.
Dr. Bruce N. Saffran (“Saffran”) sued Johnson & Johnson and Cordis Corporation (collectively “Cordis”) for infringement of U.S. Patent No. 5,653,760 (“the ’760 patent”), which relates to the treatment of injured tissues by sequestering particles and macromolecules in a defined space using a selectively permeable barrier. Cordis manufactures and produces drug-eluting stents under the brand name Cypher®. After a jury found that the Cordis stents infringed the ’760 patent, Cordis moved for judgment as a matter of law on infringement, which the district court denied.
On appeal, Cordis argued that the district court incorrectly construed various claim terms and that, under the correct construction, its products could not be found to infringe the ’760 patent as a matter of law. Specifically, Cordis argued that the term “device” should be construed to mean a continuous sheet, while Saffran argued that the district court correctly declined to limit the term “device” to require a sheet. The Federal Circuit concluded that the term “device,” as used in all claims of the ’760 patent, should be construed to mean a continuous sheet and to exclude stents having open mesh holes. The Federal Circuit partly relied on the fact that the specification of the ’760 patent consistently described the disclosed “device” as a sheet. Further, the Federal Circuit determined that Saffran’s statements during prosecution of the ’760 patent limited the term “device” to a continuous sheet.
Regarding the means-plus-function limitation in each independent claim of the ’760 patent, the Federal Circuit concluded that the corresponding structure for the limitation should be construed as a hydrolyzable bond. Because the specification repeatedly described the links between materials and the sheet as hydrolyzable bonds, the Federal Circuit was not persuaded by Saffran’s argument that the corresponding structure was any chemical bond or linkage.
As Cordis’s stents both lacked a continuous sheet and did not use hydrolyzable bonds, the Federal Circuit held that Cordis was entitled to a judgment of noninfringement as a matter of law.
In an opinion concurring-in-part, Judge Moore stated that she agreed with the district court’s holding that the corresponding structure for the means-plus-function claim was “chemical bonds and linkages.” However, Judge Moore noted that construction of this limitation was unnecessary to resolve this case. Finally, in an additional opinion concurring-in-part, Judge O’Malley disagreed with the majority’s construction of “device,” stating that the meaning of “device” as it appeared in the asserted claims was not narrowed by the written description or prosecution history.
Patentable Invention: Anticipation: Prior Publication
Patentable Invention: Obviousness: Secondary Considerations of Nonobviousness
In re Morsa, No. 12-1609 (Fed. Cir. (B.P.A.I.) Apr. 5, 2013). Opinion by O’Malley, joined by Rader and Lourie.
In affirming-in-part and vacating-in-part the decision of the Board of Patent Appeals and Interferences (“Board”), the Federal Circuit held that although prior art publications are presumed to be enabling, if a patent applicant makes a non-frivolous argument that it is not enabling, the patent examiner must come forward with evidence of its enablement. Further, the Federal Circuit stated that when a patent applicant points to objective factors of nonobviousness, the applicant must present specific evidence of these objective factors.
Steven Morsa (“Morsa”) submitted utility patent application No. 60/211228 (“the ’228 application”), which disclosed a method and apparatus for the furnishing of benefits and benefits information. The examiner at the United States Patent and Trademark Office (“PTO”) rejected Morsa’s various claims as unpatentable over one prior publication. The PTO found that the prior publication either anticipated or rendered obvious multiple claims of the ’228 application. The Board affirmed the decision of the PTO, and Morsa appealed to the Federal Circuit.
On appeal, Morsa argued that the publication was actually published after the date of his application and, therefore, could not be prior art. Morsa pointed to several reasons why he believed that the date listed on the publication was suspect. The Federal Circuit concluded, however, that because the publication was clearly dated September 27, 1999, it was published before Morsa’s application date of April 12, 2000.
Morsa also argued that the publication was not enabling, identifying specific defects in the publication’s disclosure. The Federal Circuit stated that although prior publications are presumed to be enabling, Morsa sufficiently rebutted this presumption by making a non-frivolous argument that the publication was not enabling. Morsa was not required to present affidavits or declarations to support his arguments, and because Morsa identified specific, concrete reasons for the lack of enablement, the PTO was required to come forward with evidence that the publication was enabling. Thus, the Federal Circuit vacated the Board’s decision and remanded two claims of the ’228 application for further proceedings.
Finally, the Federal Circuit upheld the Board’s decision that various claims of the ’228 application were rendered obvious by the prior publication. Although Morsa argued that objective factors weighed in favor of finding nonobviousness, Morsa failed to provide any evidence of the objective factors. The Federal Circuit concluded that the Board did not err in failing to consider evidence of objective factors when there was no evidence to consider.
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