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 September 27, 2013. Hai'ou Qin and Ross Barton prepared this edition.
Case Summaries
Patentable Invention: Anticipation: Generally
Patentable Invention: Obviousness: Scope and Content of Prior Art
Patentable Invention: Obviousness: Secondary Considerations of Nonobviousness
Patentable Invention: Obviousness: Teaching, Suggestion, or Motivation in Prior Art
Claim Interpretation: Ordinary Meaning
Claim Interpretation: Intrinsic Evidence: Specification
Rambus Inc. v. Rea, No. 12-1634 (Fed. Cir. (B.P.A.I.) Sept. 24, 2013). Opinion by Moore, joined by Linn and O’Malley.
In affirming the construction of disputed claim terms, the Federal Circuit ruled that, in an appeal to the Board of Patent Appeals and Interferences (the “Board”), the examiner retains the burden to prove invalidity. In addition, the Federal Circuit concluded that the Board erred when it rejected the claims as obvious when it supplied its own reasons to combine the prior art references without providing a fair opportunity to the appellant to respond to this rejection. Finally, the Federal Circuit determined that the Board erred in finding that the proffered objective evidence of nonobviousness lacked a nexus to the claims at issue.
The United States Patent and Trademark Office (“PTO”) initiated an inter partes reexamination of U.S. Patent No. 6,260,097, which is assigned to Rambus Inc. (“Rambus”) and which relates to using a synchronous memory system to transfer data by transferring a portion of data during the rising edge of the clock signal and a portion of data during the falling edge of the clock signal. The PTO rejected various claims as anticipated by and obvious in view of two references: unexamined Japanese Patent Application No. 56-88987 (“Inagaki”) and an Intel iAPX system manual and specification (“iAPX”). The Board upheld the rejections, and Rambus appealed.
The Board predicated its anticipation analysis on construction of the terms “external clock signal” and “write request.” On appeal, the Federal Circuit ruled that the Board properly held that the claim term “external clock signal” requires the clock to be periodic only during the data input phases, not periodic for all system operations, because nothing in the claim language indicates the signal to be periodic all the time, and neither the specification nor the prosecution history requires such a narrower construction. Similarly, the Federal Circuit agreed with the PTO and the Board that “write request” is not limited to a multiple-bit request but could include a single bit, because the plain language of the claim does not contain that requirement and the specification discloses a single bit as a preferred embodiment. Because the Federal Circuit affirmed the Board’s construction of these terms, it affirmed its finding of anticipation by the Inagaki reference.
Turning to obviousness, the Federal Circuit first concluded that it was legal error for the Board to place the burden on Rambus because the examiner retains the burden to show invalidity. The Appeals Court also ruled that, by supplying its own reasons to combine the iAPX and Inagaki references, the Board exceeded its limited role of “review[ing] the examiner’s decisions during prosecution.” The Federal Circuit noted that new factual findings regarding these references deprived Rambus of its due process rights. Finally, the Federal Circuit held that the Board erred by failing to consider uncontested evidence that Rambus had presented as objective evidence of nonobviousness. The Board also erred by rejecting certain objective evidence of nonobviousness as not commensurate with the scope of the claims because, according to the Federal Circuit, evidence of this nature need only be reasonably commensurate with the scope of the claims. As a result, the Federal Circuit vacated and remanded the Board’s obviousness determinations.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1634.Opinion.9-20-2013.1.PDF
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Defenses: Fraud and Inequitable Conduct: Materiality
Defenses: Fraud and Inequitable Conduct: Intent to Deceive
Defenses: Fraud and Inequitable Conduct: Burden of Proof
Network Signatures, Inc. v. State Farm Mutual Automobile Insurance Co., No. 12-1492 (Fed. Cir. (C.D. Cal.) Sept. 24, 2013). Opinion by Newman, joined by Wallach. Dissenting opinion by Clevenger.
In reversing the grant of summary judgment of inequitable conduct, the Federal Circuit determined that a patent attorney’s failure to set forth in a petition to revive the details of how or why a patent was abandoned did not provide clear and convincing evidence of inequitable conduct.
Network Signatures, Inc. (“NSI”) sued State Farm Mutual Automobile Insurance Company (“State Farm”) in the U.S. District Court for the Central District of California for infringement of U.S. Patent No. 5,511,122 (“the ’122 patent”), which related to internet security and was assigned to the United States of America represented by the Secretary of the Navy and licensed to NSI. The technology claimed in the patent was developed by a scientist at the Naval Research Laboratory (“NRL”). The NRL permitted the patent to lapse for nonpayment of the 7.5-year maintenance fee. Upon learning of NSI’s interest in licensing the patent, NRL petitioned the United States Patent and Trademark Office (“PTO”) to accept delayed payment of the fee, and the PTO granted the petition.
State Farm moved for summary judgment of unenforceability of the ’122 patent on the theory that the NRL patent attorney, John Karasek, falsely represented to the PTO that NRL’s non-payment of the maintenance fee was an unintentional mistake of fact. The district court found that the circumstance did not amount to “a mistake of fact” and ruled that “the discovery of additional information after making a deliberate decision to withhold a timely action is not the mistake in fact that might form the basis for acceptance of a maintenance fee,” thereby giving rise to a defense of inequitable conduct.
On appeal, the Federal Circuit disagreed that Karasek’s action constituted a material misrepresentation with intent to deceive because Karasek completed the standard PTO form, which does not require explanation of the circumstances. The Federal Circuit also noted that the relevant regulation, 37 C.F.R. § 1.378(c)(3), requires only a statement that the delay was “unintentional.” Because Karasek acted promptly upon learning of NSI’s commercial interest in the ’122 patent, after only two weeks of delay, the court concluded that “there was not inequitable conduct in representing that the delay was unintentional, for the attorney simply used the standard language required by federal regulations.”
In a dissenting opinion, Judge Clevenger stated that the district court was correct in granting summary judgment to State Farm on materiality, but should not have granted summary judgment on intent. Judge Clevenger would remand the issue of intent for a trial on the merits. He emphasized that the reason NRL failed to learn of Network Signatures’s commercial interest in the ’122 patent was of its own making, having neglected Network Signatures’s phone and email messages.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1492.Opinion.9-20-2013.1.PDF
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Claim Interpretation: Generally
Infringement: Hatch-Waxman Act
Sunovion Pharmaceuticals, Inc. v. Teva Pharmaceuticals USA, Inc., et al., No. 13-1335 (Fed. Cir. (D.N.J.) Sept. 26, 2013). Opinion by Lourie, joined by Schall and Reyna.
The Federal Circuit held that pledging in a declaration not to infringe a patent cannot override the conclusion that when a drug manufacturer seeks FDA approval to market a generic compound within the scope of a valid patent, it is an infringement as a matter of law.
Sunovion Pharmaceuticals, Inc. (“Sunovion”) sued Dr. Reddy’s Laboratories, Ltd. and Dr. Reddy’s Laboratories, Inc. (collectively “Reddy”) for infringement of U.S. Patent No. 6,444,673 (“the ’673 patent”) under 35 U.S.C. § 271(e)(2)(A), after Reddy submitted to the FDA an Abbreviated New Drug Application (“ANDA”). The ’673 patent is directed to pharmaceutical compositions of the drug eszopiclone, which is the active ingredient in the drug marketed as a sleep medication under the brand name Lunesta. The Reddy ANDA sought approval to manufacture, use, and sell generic versions of Lunesta containing not more than 0.3% of eszopiclone’s corresponding levoratory enantiomer, (R)-zopiclone. To obtain the approval from the FDA, Reddy restricted its generic eszopiclone products to not more than 0.6% of R-isomer in its amended ANDA specification, although the FDA requested Reddy to tighten the (R)-zopiclone limit in the drug substance and drug product to not more than 0.3%.
Reddy moved for summary judgment of noninfringement and provided the district court with a “certification” that it would not market a product containing less than 0.3% of the levorotatory isomer. In construing the claims in connection with the summary judgment motion, the district court construed the claim term “essentially free” to mean “less than 0.25% of [the] levorotatory isomer” because the specification provided no guidance as to “what degree of enantiomeric purity of the dextrorotatory isomer was essentially free of the levorotatory isomer.” The district court granted Reddy’s motion for summary judgment of noninfringement after Reddy submitted a declaration to the court vowing that it would market only generic eszopiclone tablets containing 0.3-0.6% R- zopiclone, notwithstanding that “Reddy had not gained approval from the FDA for products with that level of impurity.” Sunovion appealed.
The Federal Circuit affirmed the district court’s construction of “essentially free” as containing less than 0.25% levorotatory isomer in view of the applicants’ “repeated and definitive remarks” in the prosecution history of the ’673 patent. The Federal Circuit, however, ruled that Reddy’s ANDA constituted a technical infringement for jurisdictional purposes under the Hatch-Waxman framework. The Appeals Court thus reversed the district court’s grant of summary judgment of noninfringement, reasoning that Reddy’s request for approval of levorotatory amounts from 0.0-0.6% is within the scope of the less than 0.25% limitation of the ’673 patent claims and its “pledging to follow internal manufacturing guidelines that may produce a drug composition for which the FDA has indicated it will not grant approval” is insufficient to avoid infringement.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1335.Opinion.9-24-2013.1.PDF
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Claim Interpretation: Ordinary Meaning
Infringement: Generally
Defenses: Invalidity
MeadWestVaco Corp., et al. v. Rexam Beauty and Closures, Inc., et al., Nos. 12-1518, -1527, (Fed. Cir. (E.D. Va.) Sept. 26 2013). Opinion by Prost, joined by O’Malley and Taranto.
In affirming-in-part and vacating-in-part the judgment of the U.S. District Court for the Eastern District of Virginia, the Federal Circuit determined that a competitor infringed an asserted patent by employing a claimed quenching process in making an invisible dip tube for perfumes consisting of a crystalline polymer with an x-ray diffraction crystallinity falling within the scope of the disputed claims.
The case involves three groups of parties: Rexam Beauty and Closures, Inc. and Rexam Dispensing Systems S.A.S. (collectively “Rexam”), Valois of America, Inc. and Valois S.A.S. (collectively “Valois”), and MeadWestVaco Corporation and MeadWestVaco Clamar, Inc. (collectively “MWV”). Rexam, Valois, and MWV are competitors in the perfume packaging industry and each designs, manufactures, and assembles custom-made “dispenser assemblies,” such as spray pumps with an attached dip tube for dispensing fragrances. MWV sued Valois and Rexam for infringement of U.S. Patent Nos. 7,718,132 (“the ’132 patent”) and 7,722,819 (“the ’819 patent”), which relate to a dispenser assembly for perfumes comprising a dip tube consisting “essentially of an extruded and quenched crystalline fluoropolymer.” All of the claims of the ’819 patent are specific to fragrance dispensers. Some of the claims of the ’132 patent, a continuation of the ’819 patent, are specific to fragrance dispensers and others are directed to generic dispensers.
Before trial, the district court granted MWV’s motion for summary judgment of nonobviousness, and denied Rexam’s and Valois’s motions for summary judgment of indefiniteness. After a bench trial, the district court determined that Valois and Rexam did not infringe the perfume-specific claims of the ’819 and ’132 patents, but did infringe the generic dispenser claims of the ’132 patent. Valois and Rexam appealed.
On appeal, the Federal Circuit ruled that the district court erred in granting summary judgment of nonobviousness because the court failed to treat Claims 15 and 19 of the ’132 patent, which are not limited to fragrance products, differently from the asserted fragrance-specific claims. Because the objective evidence of nonobviousness offered by MWV to support the validity of the generic claims actually related to fragrance-specific uses, the district court erred in concluding that the generic claims enjoyed commercial success or met any long-felt need. In addition, the Federal Circuit noted that Valois presented evidence creating material issues of fact, which rendered the issue inappropriate for resolution on summary judgment.
In upholding the district court’s construction of “quenched” to mean “rapidly cooled,” the Federal Circuit agreed that “quenching” is not limited to rapidly cooling by immersion into a cooling liquid, but instead encompasses rapid cooling by any cooling medium. The Federal Circuit thus affirmed the district court’s finding of infringement, noting that Valois’s accused products are extruded and passed through a cooling tank, using “a constant flow of chilled water that removes heat from the tube via the air in the tank.” Regarding the term “transparency” in the context of “a transparency of about 80% or more,” the Federal Circuit agreed with MWV that the ’132 patent does not define transparency and that the district court correctly construed the term according to its plain meaning as “allowing visible light through so that objects can be clearly seen through it.”
The Federal Circuit also affirmed the district court’s denial of Rexam’s motion to exclude infringement testimony from MWV’s expert, Dr. Reibenspies. Both Rexam and MWV stipulated to a construction of the term “having an XRD crystallinity not greater than about 13%” that required measuring the crystallinity using certain x-ray diffraction (“XRD”) testing parameters set forth in the patent specification. Because the parameters disclosed in the ’132 patent are inadequate to fully describe an XRD test, the experts retained by MWV and Rexam arrived at different infringement conclusions by utilizing different parameters. The Federal Circuit agreed with MWV that Rexam’s criticisms of Dr. Reibenspies’s testimony go to issues of infringement, not admissibility. The Federal Circuit noted that because the district court has “broad discretion in determining credibility,” its reliance on Dr. Reibenspies’s testimony was not reversible error.
Finally, the Federal Circuit concluded that Rexam and Valois waived the issue of indefiniteness by failing to raise it at the bench trial after the district court denied their motion for summary judgment of indefiniteness.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1518.Opinion.9-24-2013.1.PDF
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