"Hottest" Developments in 2012


April 15, 2012

On March 20, 2012, the U.S. Supreme Court issued its opinion in Mayo v. Prometheus regarding the scope of patent-eligible subject matter in process claims. See The IP Law Outline, at pages 1221-22, 1233-35, and 1239-57.

Then, on March 26, 2012, the Supreme Court vacated and remanded Myriad, 7/29/11, for the Federal Circuit’s reconsideration in light of the Court’s decision in Mayo v. Prometheus. See The IP Law Outline, at pages 1221-25, 1237, 1239-54, and 1256-57.

Since the March 11, 2012 posting, the Federal Circuit issued twelve (12) precedential patent law opinions and orders. The “hottest” developments from the cases -- which The IP Law Outline (pages cited below) highlights in red along with the other law and issues from the current cases to distinguish them from the earlier cases -- are:

1) The Federal Circuit’s claim construction in Aventis Pharma, 4/9/12 (Judges Prost, Linn, and Dyk), reiterating from the court’s opinion in Thorner, 2/1/12, that the court will only interpret a claim term more narrowly than its ordinary meaning under two circumstances: 1) when a patentee sets out a definition and acts as its own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution (pages 573-81); for lexicography, the patentee’s clear definition of the term “may be inferred from clear limiting descriptions of the invention in the specification or prosecution history” (pages 770-77), while a disclaimer in the specification (as distinguished from a prosecution disclaimer, which the court stated must be “clear and unmistakable”) is evidenced, under Teleflex (2002), by “expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope,” which was not present in this case because the specification did not indicate that the disputed minimum eight-hour stability limitation was “an essential feature of the claimed perfusion or an advantage of the perfusion over the prior art” – citing Liebel-Flarsheim, 2/11/04 (pages 669-78) (See the “Archives” tab above and my March 11 discussion (in No. 1) of the court’s opinion in Thorner, 2/1/12, with a listing of the types of possible “disclaimers” in the specification, which I based on the Federal Circuit’s about 241 precedential cases on claim construction since Phillips (en banc) – see pages 527-34 for a listing of all the cases and the judges on each panel);

2) The Federal Circuit’s 5-5 split on claim construction in Marine Polymer, 3/15/12 (en banc), with the majority (Judges Lourie, Rader, Newman, Bryson, and Prost) affirming the district court’s narrow interpretation of the term “biocompatible” (which the district court found did not have a plain and ordinary meaning), based on an example in the specification read as a whole describing “the invention” narrowly, and holding that the doctrine of claim differentiation was not applicable in light of the above construction, vs. the dissent (Judges Dyk, Gajarsa, Reyna, Wallach, and Linn) opining that the specification’s description of “the invention” was made in the context of a specific non-limiting “example” and that the doctrine of claim differentiation applied where there was an alternate broader construction of “biocompatible” based on the written description (pages 612, 676-85, 727-30, and 820-31);

3) The Federal Circuit’s split on claim construction in Advanced Fiber, 4/3/12 (Judges Lourie, Prost, and Dyk, dissenting), in which the court held that the district court’s claim construction, which was based in part on dictionary definitions, was erroneous because it excluded an embodiment disclosed in the specification, and that it did not matter that the embodiment was disclosed in a brief single sentence, stating that the “fact that an embodiment is disclosed in a single sentence is not a license to ignore that disclosure” (Judge Dyk, dissenting, opined that the claims as properly construed excluded the embodiment, where the patentee during prosecution provided a specific definition of the disputed term from a technology reference to overcome prior art.) (pages 652-58 and 742);

4) The Federal Circuit’s en banc decision in Marine Polymer, 3/15/12, ruling 6-4 that intervening rights arising from reexamination do not apply to claims that have not been formally “amended” and are not “new” under Section 307(b), and thus rejecting the prior panel’s decision, on 9/26/11, that intervening rights applied where the patentee “amended” its claims during reexamination based solely on substantive arguments disclaiming claim scope (pages 2058-59 and 2077-79);    

5) The Federal Circuit’s en banc decision in Zoltek, 3/14/12, in which the full court sua sponte revisited and vacated a prior panel decision, Zoltek, 3/31/06, and interpreted and held that under Section 1498(a) the government may be liable for direct infringement by its contractors under Section 271(g) (Judge Dyk, dissenting, opined in light of the presumption against extraterritoriality that Section 1498(a) was clearly intended to be limited to the government’s liability for direct infringement under Section 271(a), i.e., the use or manufacture of the invention only within the United States) (pages 1935-37); and

6) The Federal Circuit’s affirmance of inequitable conduct in Aventis Pharma, 4/9/12, under the more rigorous standards for materiality and intent to deceive decided in Therasense, 5/25/11 (en banc), where the district court found that one of the inventors had a specific intent to deceive, based on the evidence at trial and the inventor’s lack of credibility with respect to his reasons for withholding material invalidating prior art references (pages 1613, 1618-25, 1628-30, 1638, 1662-66, 1674-76, and 1692-94).

The Federal Circuit also issued three (3) precedential trademark law opinions. The “hottest” development from these cases was the court affirming the TTAB’s decision that a mark on a closure cap design for a medical testing tube was not registrable because it was functional.  Judge Linn dissented, arguing that the mark, when properly viewed as a whole, was not functional (pages 2008 and 2019-20).

March 11, 2012

1) The Federal Circuit’s claim construction and rejection in Thorner, 2/1/12 (Judges Moore and Rader, and District Judge Aiken) of an “implied” redefinition of a claim term in the specification based on the disclosed embodiments using the term in the same way, ruling that lexicography and disavowal of claim scope, which are the “only two exceptions” to the rule that claim terms are generally given their ordinary and customary meaning, “require a clear and explicit statement by the patentee” AND that a disclaimer in the specification must be both “clear” and “unmistakable” – which until now has been the requirement only for a prosecution disclaimer (because the prosecution history being an ongoing negotiation between the PTO and the applicant often lacks the clarity of the specification) (pages 658-59, 680-711). There have been at least two nonprecedential opinions prior to Thorner in which the court indicated that a disclaimer in the specification must be “clear and unmistakable” – both of which opinions were also authored by Judge Moore – Sanofi-Aventis, 9/10/09, and Uniloc USA, 8/7/08, while recent precedential opinions requiring this stricter “clear and unmistakable” standard for disclaimers in the specification include Judge Moore’s dissent to the denial of en banc review in Retractable Technologies, 10/31/11 (“clear and unambiguous” disclaimer), and Judge Moore’s dissent this month in Digital-Vending Services, 3/7/12 (repeatedly requiring a “clear and unmistakable” disclaimer). The standard for a disclaimer in the specification is the rule in Teleflex (2002) that language of disavowal requires “expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” According to Judge Moore, the “standard for disavowal is exacting” and applies when the specification “makes clear that the invention does not include a particular feature,” citing SciMed (2001). However, “disclaimers” in the specification also occur when the specification makes clear that the invention must include a particular feature, for example, when the patent treats a feature of the invention as being “important.” Judge Moore recognized this, citing Toro (1999) (a case “with less restrictive language”), in which the court held there was disavowal when the specification disclosed a single embodiment and described the relevant structure as “important to the invention.” Clearly, a variety of “clear” disavowals or “disclaimers” in the specification are possible -- from a clear and unmistakable disclaimer, as occurred in SciMed (a “SciMed disclaimer”), and as Judge Moore opined was present in Digital-Vending due to the patent’s use of language of “requirement,” to “disclaimers” resulting from less restrictive language, but still meeting the Teleflex standard of being “expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” The “Sample Pages” below contain the “Disclaimer in the specification” section of The IP Law Outline, which identifies the different ways that “disclaimers” occur in the specification – albeit not always labeled by the court as a disclaimer. Possible “disclaimers” include: 1) a SciMed disclaimer, 2) statements in the specification describing the invention as a whole narrowly, e.g., describing “the present invention” or “the invention” narrowly, 3) the specification describing an embodiment as “essential” or “critical” or “important” or “necessary” or “required” (as Judge Moore recognized in Digital-Vending), and 4) the specification repeatedly and consistently describing and reinforcing a particular usage or feature of a claim term. These types of “disclaimers” also are consistent with the rule that preferred embodiment(s) may not be read into the claims absent a “clear disclosure” that the patentee intended the claims to be limited -- which is just another way of characterizing a “disclaimer” in the specification. See also pages 805-16. The presence or not of a disclaimer in the specification should be decided by the fact finder, i.e., the district court judge, with the benefit of proposed fact findings and argument regarding the patent from the parties. One additional rule that also must be respected, which Judge Moore, again citing Toro, highlighted in Digital-Vending, is that the doctrine of claim differentiation “does not serve to broaden claims beyond their meaning in light of the specification, and does not override clear statements of scope in the specification and the prosecution history.” See also pages 714-17. On one hand, absent a clear disavowal in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language (Home Diagnostics, 8/31/04), while on the other hand, the patentee pays the cost for disavowal. Fuji Photo Film, 10/7/04. See also pages 565-72, 680.

2) The Federal Circuit’s ruling in a split decision in MySpace, 3/2/12 (Judges Plager, Newman, and Mayer, dissenting) that the better course in litigation is to decide validity based on Sections 102 and 103 (i.e., the “conditions of patentability” in Section 282) and Section 112, rather than Section 101, particularly when the invention raises the issue of being an “abstract idea,” such as a business method claim (Judge Mayer, dissenting, opined that the Section 101 issue is an “antecedent question” that must be addressed before the court can consider whether particular claims are invalid under Sections 102 or 103, and referring to Section 101 ”striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles” – Bilski (S.C.)) (page 1204).

3) The Federal Circuit’s affirmance in a split decision in Bard Peripheral Vascular, 2/10/12 (Judges Gajarsa, Linn, and Newman, dissenting) of $371 million in enhanced damages based on willful infringement (pages 1003-04, 1007-09, 1014-15, 1076-79), along with $19 million in attorney fees and costs (pages 1133, 1142-43), where the infringer failed to prove joint inventorship (pages 1557, 1567-77), anticipation and obviousness based on the same prior art references previously considered and rejected by the PTO (pages 1197-1201, 1257-59), and lack of written description for claims not limited to an asserted feature, because the patent did not require the asserted feature (pages 1506, 1535-37).

4) The Federal Circuit’s reversal in Clearvalue, 2/17/12, of a jury determination of lack of anticipation, applying the rule that all limitations of a claimed invention must be described in a single prior art reference, rather than in a single example of a reference, where the disclosure of a prior art genus range (150 ppm or less) anticipated the claimed species range (50 ppm or less) because the claimed range was not shown to be critical for the invention to work, distinguishing Atofina, 3/23/06 (pages 1241-47, 1309).

5) The Federal Circuit’s application in In re Staats, 3/5/12, of the rule that decisions by the CCPA are binding precedent on the Federal Circuit, and rejecting the PTO’s argument that a binding CCPA case should be limited to its specific facts, stating that the “necessary implications” of a case’s holding are “of course not limited to the facts of that case” – Herb’s Welding (S.C.) (pages 331-34).

January 31, 2012

1) The Federal Circuit’s grant of en banc review of Marine Polymer, 9/26/11, in which a split panel (Judge Lourie, dissenting) held that the intervening rights defense to infringement applied when the patentee made disclaiming arguments during reexamination, without amending the claims (pages 2019-21);

2) The Federal Circuit’s holding that a computer-implemented business method claim was not patent-eligible under Section 101 merely by reciting in the preamble that the method was “computer-aided” – distinguishing Ultramercial, 9/15/11 (pages 1186, 1196-97, 1202-04, 1217-19);

3) The Federal Circuit’s affirmance of the district court’s $4.7 million award of attorney and expert witness fees based on bad faith litigation, which included the patentee’s unreasonable claim construction that ignored the patent and prosecution history, and reliance on unreliable and inadmissible expert testimony (pages 1115-16, 1131-44, 1677-81);

4) The Federal Circuit’s reversal of a $56 million judgment, ruling that to prove novelty or a lack of anticipation, expert testimony is not a substitute for the actual disclosure of a prior art reference, viewed as a whole (pages 1220-25);

5) The Federal Circuit’s ruling that the party asserting prior invention under Section 102(g) must prove that it appreciated what it had made, but does not need to know everything about how or why its invention worked, or conceive of its invention using the same words that the patentee uses to claim it (pages 1278-83); and

6) The Federal Circuit affirming lack of declaratory judgment jurisdiction over invalidity counterclaims with respect to withdrawn or unasserted patent claims (pages 112-36).