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 October 18, 2013. Andrew Sterling and Michele Glessner prepared this edition.
Case Summaries
Defenses: Miscellaneous Defenses
Keurig, Inc. v. Sturm Foods, Inc., No. 13-1072 (Fed. Cir. (D. Del.) Oct. 17, 2013). Opinion by Lourie, joined by Mayer. Concurring opinion by O’Malley.
Affirming the U.S. District Court for the District of Delaware’s grant of summary judgment of noninfringement, the Federal Circuit held that the right to assert method claims of a patent is exhausted by the unconditional sale of a product covered by apparatus claims of that patent. Further, the Federal Circuit stated, in a passage characterized as dicta by a concurring opinion, that patent exhaustion is determined for a patent in its entirety, and not on a claim-by-claim basis.
Keurig, Inc. (“Keurig”) manufactures and sells single-serve coffee brewers and beverage cartridges for use in those brewers, which it asserts are covered by method and apparatus claims of U.S. Patent Nos. 7,165,488 (“the ’488 patent”) and 6,606,938 (“the ’938 patent”). Keurig filed suit against Sturm Foods, Inc. (“Sturm”) alleging, inter alia, that the sale of Sturm’s beverage cartridges for use in certain Keurig brewer models directly infringed methods claimed in the ’488 and ’938 patents. Sturm asserted the affirmative defense of patent exhaustion and moved for summary judgment of noninfringement, which the district court granted.
On appeal, Keurig argued that the district court erred in failing to apply the substantial embodiment test set forth in Quanta Computer, Inc. v. L.G. Electronics, Inc., 553 U.S. 617 (2008). The substantial embodiment test provides that method claims are exhausted by sale of an unpatented component article if that article includes all the inventive aspects of the patented method and has no reasonable noninfringing use. Keurig argued that under Quanta, its patent rights were not exhausted because its brewers are capable of many uses that do not infringe the asserted method claims, such as when used with reusable cartridges that are not covered by the claims of the ’488 and ’938 patents. Keurig also argued that the district court erred by not adjudicating exhaustion on a claim-by-claim basis.
Affirming the district court’s grant of summary judgment, the Federal Circuit held that Quanta’s substantial embodiment test did not apply in this case because Keurig acknowledged that its brewers are the commercial embodiments of the apparatus claims of the ’488 and ’938 patents. The Federal Circuit held that Keurig’s sale of the patented brewers without conditions granted the unfettered right to use them in any way the customers chose. Further, claims of the ’488 and ’938 patents are directed to methods of using Keurig’s brewers and the brewers themselves. Therefore, the sale of Keurig’s patented brewers exhausted its right to assert infringement of the methods claimed in the ’488 and ’938 patents.
The Federal Circuit also stated that adjudication of patent exhaustion is determined for patents in their entirety, and not on a claim-by-claim basis. Therefore, Keurig’s decision to seek protection of both apparatus and method claims in the same patent results in those claims being judged together for purposes of patent exhaustion.
In a concurring opinion, Judge O’Malley explained that patent exhaustion may not always be adjudicated on a patent-by-patent basis and opined that there could be instances where assessing exhaustion on a claim-by-claim basis would be necessary and appropriate.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1072.Opinion.10-15-2013.1.PDF
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Patent Office Procedures: Prosecution Before the Office: Prosecution of Applications: Appeals
In re Biedermann, et al., No. 13-1080 (Fed. Cir. (P.T.A.B.) Oct. 18, 2013). Opinion by Linn, joined by Moore and O’Malley.
Vacating and remanding the Patent Trial and Appeal Board’s (“Board”) decision affirming a rejection of claims for obviousness, the Federal Circuit held that the Board improperly introduced new grounds for rejection by relying on a new factual basis for the reason to combine prior art references.
Lutz Biedermann and Jurgen Harms (collectively “Biedermann”) appeal a decision of the Board affirming the rejection of certain claims of U.S. Patent Application No. 10/306,057 (“the ’057 application”). The ’057 application relates to a bone screw comprised of a holding portion consisting of two legs that create a U-shaped cross-section for a rod that connects to other bone screws. The two legs of the holding portion have a square-shaped thread configuration that is described as advantageous because the configuration avoids splaying of the legs by obviating the generation of outward radial forces.
The examiner rejected seven claims of the ’057 application for obviousness based on a combination of U.S. Patent Nos. 5,005,562 (“Cotrel”), 4,846,614 (“Steinbock”), and 4,688,832 (“Ortloff”). The examiner concluded that Cotrel discloses each element of the ’057 application except for the thread configuration. The examiner further concluded that the square-shaped thread configuration of the ’057 application was disclosed in Steinbock, which described it as the most efficient for load transfer. Therefore, according to the examiner, it would have been obvious to combine the efficient square-shaped thread configuration of Steinbock with the bone screw disclosed in Cotrel. The examiner relied on Ortloff for other claim recitations.
In affirming the examiner’s rejection, the Board set forth a different rationale for why it would be obvious to combine Cotrel and Steinbock. According to the Board, Cotrel teaches avoiding splaying with a saw-tooth thread configuration, and Steinbock groups together a saw-tooth thread configuration with the square-shaped thread configuration of the ’057 application. Therefore, according to the Board, it would have been obvious to combine Cotrel and Steinbock to avoid splaying. In support of its conclusion, the Board cited an additional reference not cited by the examiner: Erik Oberg et al., Machinery’s Handbook (Christopher J. McCauley et al. eds., 26th ed. 2000) (“Machinery’s Handbook”).
On appeal, Biedermann argued that the Board, in affirming the examiner’s rejection, issued a new ground for rejection. Specifically, Biedermann argued that the Board did not rely on the examiner’s efficient load transfer rationale to combine Cotrel and Steinbeck, and instead issued a new ground of rejection by adopting a rationale based on newly found facts relating to the avoidance of splaying. The Federal Circuit held that, in affirming the examiner’s obviousness rejection, the Board improperly set forth a new ground of rejection, namely, that it would be obvious to combine Cotrel and Steinbock to avoid splaying. Further, the Board’s conclusion was supported by a new factual basis not raised in the examiner’s rejection. The Federal Circuit also held that the Board’s citation to Machinery’s Handbook was inappropriate because the reference was used as support for the Board’s new ground of rejection.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1080.Opinion.10-16-2013.1.PDF
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