Patent Case Summaries February 28, 2014

Federal Circuit Patent Case Summaries for the Week Ending February 28, 2014

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 February 28, 2014. Matt Howell and Mike Connor prepared this edition. 


Case Summaries

The Patent Application: Specification: Written Description

GlaxoSmithKline LLC v. Banner Pharmacaps, Inc., et al., Nos. 13-1593, -1594, -1595, -1598 (Fed. Cir. (D. Del.) Feb. 24, 2014). Opinion by Taranto, joined by O’Malley and Wallach.

In affirming the district court’s rejection of a written-description challenge to the asserted claims of a patent, the Federal Circuit held that the written description adequately supported the claim term “solvate.”

Plaintiff GlaxoSmithKline LLC sued Banner Pharmacaps, Inc., Impax Laboratories, Inc., Roxane Laboratories, Inc., Mylan Inc., Mylan Pharmaceuticals, Inc., and Watson Laboratories, Inc. Florida (“Defendants”), alleging that drug products containing the molecule dutasteride, which Defendants proposed to market, fell within the claims of United States Patent No. 5,565,467 (“the ’467 patent”). All of the Defendants stipulated to infringement but alleged that the asserted claims were invalid for anticipation, lack of utility, lack of enablement, and inadequacy of the written description. After a three-day bench trial, the district court found that Defendants had not proved the asserted claims were invalid under any of those invalidity theories.

The sole issue on appeal was the district court’s rejection of Defendants’ argument that the claim term “solvate” is not adequately described, whether construed under Defendants’ or the district court’s construction. The Federal Circuit held that solvate referred to a molecular complex defined by structure and by the process of creating it, not by the molecule’s function or performance properties, and thus the specification of the ’467 patent, which described the class of compounds by identifying a particular structure obtained by three particular processes, adequately supported the claims under either construction. Therefore, the district court’s determination that the ’467 patent was not invalid for lack of written description was not clear error. 

http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1593.Opinion.2-20-2014.1.PDF  
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The Patent Application: Specification: Generally
Claim Interpretation: Intrinsic Evidence: Specification
Claim Interpretation: Intrinsic Evidence: Preferred Embodiments
Claim Interpretation: Extrinsic Evidence: Dictionaries and Treatises
Claim Interpretation: Aids to Interpretation
Claim Interpretation: Claim Differentiation

Starhome GmbH v. AT&T Mobility LLC et al., No. 12-1694 (Fed. Cir. (D. Del.) Feb. 24, 2014). Opinion by Schall, joined by Moore and Reyna.

In upholding a district court’s construction of “intelligent gateway,” the Federal Circuit affirmed the district court’s judgment of noninfringement based on a stipulation between the parties.

Starhome GmbH (“Starhome”) sued AT&T Mobility LLC, Roamware, Inc. and T-Mobile USA, Inc. (“Defendants”) in the U.S. District Court for the District of Delaware, asserting the infringement of U.S. Patent No. 6,920,487 (“the ’487 patent”), which relates generally to a way of improving the functionality of phone services for users in a roaming telephone network. In particular, the ’487 patent allows users in a roaming network to make calls as if in their home network, using an “intelligent gateway.”

Following a Markman hearing, the district court construed several terms of the ’487 patent, among them “intelligent gateway,” which the district court construed to mean “a network element that transfers information to and from a mobile network and another network external to the mobile network.” Based on that construction, Starhome stipulated to a judgment of noninfringement.

On appeal, Starhome argued that the district court incorrectly construed “intelligent gateway” to require that the gateway connect to an external network, in addition to an internal network. Thus, according to Starhome, some embodiments employed a single intelligent gateway associated with a single mobile network.

The Federal Circuit rejected Starhome’s argument, holding that one of ordinary skill would have understood that the inventors did not depart from the ordinary meaning of “gateway,” which requires two networks, with their use of the term “intelligent gateway.” The Federal Circuit agreed with the district court’s reliance on several dictionaries to help it better understand the underlying technology and the way in which one of skill in the art would have used the terms.

To support its order, the Federal Circuit also relied on the specification of the ’487 patent and determined that it did not clearly depart from the well understood meaning that “gateway” required two networks. The court rejected Starhome’s argument that the construction excluded a one-gateway embodiment of the patent (shown in Figure 2), and instead ruled that Figure 2 presented an aspect of the multiple gateway system of Figure 1 (and thus constituted the same embodiment). Moreover, the Federal Circuit rejected Starhome’s claim differentiation argument, instead holding that the differentiated claims specified a certain type of external network (rather than a network, generally), and also relied on further support in the prosecution of a European application related to the ’487 patent. Because the district court’s construction of “intelligent gateway” was correct, the Federal Circuit affirmed the judgment of noninfringement. 

http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1694.Opinion.2-20-2014.1.PDF  
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The Patent Application: Claims: Indefiniteness
Claim Interpretation: Generally
Claim Interpretation: Extrinsic Evidence: Expert Testimony
Claim Interpretation: Aids to Interpretation
Infringement: Generally
Litigation Practice and Procedure: Jurisdiction: Personal Jurisdiction
Litigation Practice and Procedure: Venue
Litigation Practice and Procedure: Declaratory Judgment Actions
Litigation Practice and Procedure: Procedure: Sufficiency of Evidence at Trial

Elcommerce.com, Inc., v. SAP AG, et al., No. 11-1369 (Fed. Cir. (E.D. Pa.) Feb. 24, 2014. Opinion by Newman, joined by Plager. Opinion dissenting in part by Wallach.

On appeal, the Federal Circuit affirmed the district court’s constructions of the asserted patent, and thus the stipulation of noninfringement of the method claims of that patent, but vacated the district court’s invalidity ruling because no evidence of how a person of ordinary skill in the art would have viewed the specification was presented to establish indefiniteness.

Elcommerce.com, Inc. (“Elcommerce”) sued SAP AG and SAP America, Inc. (collectively “SAP”) in the U.S. District Court for the Eastern District of Texas for infringement of U.S. Patent No. 6,947,903 (“the ’903 patent”). The ’903 patent is directed to a system and method of monitoring a supply chain of components in order to coordinate and stabilize the supply of components from various producers. SAP subsequently filed a declaratory judgment action against Elcommerce on the same patent, and sought to transfer the case before the Eastern District of Texas to the Eastern District of Pennsylvania, which the Texas court granted. Before both courts, Elcommerce objected to the transfer on jurisdictional and venue grounds.

After the transfer, the Pennsylvania court construed the claims of the ’903 patent and, on that claim construction, entered summary judgment that the asserted system claims of the ’903 patent are invalid for indefiniteness under 35 U.S.C. § 112, ¶ 2 and ¶ 6. The parties also stipulated that the district court’s claim construction precluded a finding that SAP infringes any of the asserted method claims of the ’903 patent.

On appeal, the Federal Circuit first held that transfer was not an abuse of discretion because jurisdiction is determined at the time the complaint is filed and is preserved when a case is transferred, and thus it was irrelevant whether personal jurisdiction existed over Elcommerce in Pennsylvania.

With regard to the asserted method claims, the Federal Circuit upheld the district court’s construction of “independent supply chain sites” as requiring that the sites must be unrelated, in addition to being separate. Further, the Federal Circuit also agreed with the district court’s construction of the terms “monitoring,” “scanning,” and “detecting” as requiring that “each” independent supply chain site perform those functions. Based on those constructions, the Federal Circuit affirmed the district court’s judgment of noninfringement, which was based on a stipulation between the parties.

With respect to the asserted system claims, the Federal Circuit held that the district court incorrectly held the means-plus-function claims invalid as indefinite, because the Defendants had failed to present any evidence of how one of skill in the art at the time of the invention would have interpreted the structures that correspond to the stated functions. In particular, the Federal Circuit ruled that, although the Defendants argued the specification was devoid of any structure that corresponded to the recited function, the Defendants should have provided evidence to show how a person of ordinary skill in the art would have viewed the specification. The majority opinion emphasized the “lengthy description of performance of the functions of the elcommerce system,” which included “twenty-four pages of graphs and diagrams.” While the Federal Circuit stated that expert testimony will not always be needed for every situation, it held that the lack of expert testimony in support of the Defendants’ indefiniteness argument resulted in an improper basis on which to find clear and convincing evidence of invalidity.

In dissent, Judge Wallach noted that he disagreed with the majority’s decision to vacate the district court’s indefiniteness holdings because the specification did not contain an algorithm corresponding to the means-plus-function claims that were found invalid by the district court. Further, Judge Wallach stated that expert testimony is neither required, nor permitted, to remedy the total absence of structure provided by the specification. 

http://www.cafc.uscourts.gov/images/stories/opinions-orders/11-1369.Opinion.2-18-2014.1.PDF  
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Litigation Practice and Procedure: Venue
Litigation Practice and Procedure: Procedure: Special Writs

In re Apple Inc., Misc. Docket No. 156 (Fed. Cir. (E.D. Tex.) Feb. 27, 2014). Opinion by Reyna, joined by Prost. Dissenting opinion by Newman.

In denying the petition for a writ of mandamus by Apple Inc. (“Apple”) to order the U.S. District Court for the Eastern District of Texas to transfer a case to the Northern District of California, the Federal Circuit held that the district court did not abuse its discretion by denying Apple’s motions to transfer and to supplement the record.

In February, 2012, Core Wireless Licensing S.a.r.l. (“Core Wireless”) sued Apple for patent infringement in the Eastern District of Texas. Subsequently, Apple moved to transfer the case to the Northern District of California. The district court denied that motion, finding that Apple had “not met its burden of establishing that the Northern District of California is ‘clearly more convenient’” than the Eastern District of Texas. In particular, the district court emphasized the lack of specificity in Apple’s motion with regard to why the transfer factors favored transfer to California. Further, the district court did not abuse its discretion in denying Apple’s motion to supplement the record, since the information that Apple attempted to supplement into the record would have been known to Apple at the time it had filed its motion to transfer.

On appeal, applying the mandamus standard of whether there was such a clear abuse of discretion that refusing transfer would produce a patently erroneous result, the Federal Circuit noted that the district court stated it was unable to evaluate the convenience of the witnesses in its transfer analysis because Apple had failed to identify specific witnesses who would need to travel to the Eastern District of Texas or any third-party witnesses not subject to the compulsory process of the court, and had failed to provide information sufficient to identify the location of potential sources of discoverable information. Thus, “[n]othing suggests the district court conducted an improper transfer analysis.”

In dissent, Judge Newman stated that Apple’s substantial presence in the Northern District of California, as well as the presence of a third party in California, justified transfer even if Apple had failed to name specific witnesses, especially in light of Core Wireless’s limited connection to the Eastern District of Texas. 

http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-156.Motion_Panel_Order.2-25-2014.1.PDF  
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Litigation Practice and Procedure: Venue
Litigation Practice and Procedure: Procedure: Special Writs

In re Barnes & Noble, Inc., Misc. Docket No. 162 (W.D. Tenn.) Feb. 27, 2014). Opinion by Reyna, joined by Prost. Dissenting opinion by Newman.

In denying the petition for a writ of mandamus by Barnes & Noble, Inc. (“Barnes & Noble”) to order the U.S. District Court for the Western District of Tennessee to transfer a case to the Northern District of California, the Federal Circuit held that the district court did not abuse its discretion by denying Barnes & Noble’s motion to transfer.

In September 2012, B.E. Technology, LLC (“BE”) filed suit against Barnes & Noble in the Western District of Tennessee, alleging that Barnes & Noble’s Nook e-reader device infringes one of BE’s patents. Barnes & Noble later sought to transfer the action to the Northern District of California because it has an office in Palo Alto, California, and because most of its activities related to the Nook take place at that office. The district court, however, denied that motion because the named inventor of the patent-in-suit, founder, and CEO of BE, Martin Hoyle, had lived in the Western District of Tennessee since 2006 and had run BE from within that district since 2008.

On appeal, the Federal Circuit held that the district court did not abuse its discretion because it addressed “in depth” the convenience of the witnesses, the convenience to the parties, and the interest of justice, in accordance with Sixth Circuit law. The Federal Circuit also highlighted that BE was based in the Western District of Tennessee, where its CEO and much of the relevant evidence was also found, and thus it could not be said that Tennessee had no meaningful connection to the case. Further, the Federal Circuit noted that Barnes & Noble cited no supporting Sixth Circuit cases, and that the dissent relied on a series of cases under Fifth Circuit law.

In dissent, Judge Newman detailed Barnes & Noble’s substantial presence in the Northern District of California and stated that, although the “sole employee of the plaintiff” BE lived in Tennessee, the Federal Circuit was required to consider whether “the disparity of convenience is so marked as to outweigh the plaintiff’s traditional right to choose the forum.” Thus, Judge Newman believed that “the convenience of two venues at issue in this case is simply not comparable.” 

http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-162.Motion_Panel_Order.2-25-2014.1.PDF  

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