Posts Tagged: "Federal Circuit Review"

Federal Circuit Affirms District Court Judgment on All Grounds in LifeNet Health v. LifeCell

Lifenet’s patent is for plasticized soft tissue grafts used for transplantation in humans. The specification discloses that plasticizers can be removed before implantation, although they need not be, as claim 1 discloses three options for the implanting technician, one option being direct implantation without removing plasticizers. LifeCell’s accused grafts are preserved in a solution prior to implantation, and it is undisputed that significant amounts of plasticizers are removed during this soaking process. During claim construction, the parties disputed the meaning of the term “non-removal.” The district court concluded that construction of this term was unnecessary because it was easily understood by a person of ordinary skill in the art to have its plain meaning.

Federal Circuit Provides Additional Insight on §101 Protections for Software Patents

In a September 13, 2016 decision relating to subject matter eligibility of software patents under 35 U.S.C. § 101, the Federal Circuit vacated the district court’s order granting Defendants’ motion for judgment on the pleadings under Fed. R. Civ. P. 12(c), and held that McRO’s patents were eligible for protection under 35 U.S.C. § 101. The disputed patent claims recited a method for “automatically . . . producing accurate and realistic lip synchronization and facial expressions in animated characters.” The McRO patents identified that a problem in the prior art was that animators, even using the assistance of computers, had to manually manipulate the character model for lip movement. The McRO patents solved this problem by using rules to automatically depict more realistic synchronization of lip movements and speech.

Jury’s Willfulness Determination Affirmed Under Modified In re Seagate Standard

Stryker Corporation was awarded $70 million in lost profits after a jury found that Stryker’s patents were valid and willfully infringed by Zimmer. The district court affirmed the jury’s verdict, awarded Stryker treble damages for willful infringement, and awarded Stryker attorney’s fees. Stryker’s patents concerned portable, battery-powered, and handheld pulsed lavage devices used in orthopedic procedures to deliver pressurized irrigation for medical therapies, including cleaning wounds.

Federal Circuit Affirms Disqualification of Counsel, Dismissal of Complaint Based on Confidential Information

Schlumberger raised Rutherford’s potential conflict of interest to the court in April 2014, and subsequently filed a motion to disqualify Dynamic’s counsel. The district court found that Rutherford’s work at Schlumberger was substantially related to her current work at Acacia. The court found that because the accused features of Petrel existed in the older versions that Rutherford was exposed to, and because she was involved at Schlumberger in efforts to license Petrel to other companies, the evidence created an irrebuttable presumption that she acquired confidential information requiring her disqualification.

CAFC: Obviousness Analysis Must be Based on More than Common Sense

The Court recognized that “‘[c]ommon sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.’” However, “there are at least three caveats to note in applying ‘common sense’ in an obviousness analysis.” First, common sense is typically invoked to provide a known motivation to combine, and not to supply a missing claim limitation. Second, while some cases have allowed use of common sense to supply a missing claim limitation, “the limitation in question was unusually simple and the technology particularly straightforward.” Third, common sense “cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.”

Co-Inventors Must be Named, Even Those who Contribute to One Aspect of One Claim

On appeal, the Federal Circuit reviewed whether there was substantial evidence supporting the district court’s finding that Nathan and Matheson should be added as co-inventors. In determining that the inventorship evidence below was sufficient, the Court reiterated that all inventors are required to be named even if their contribution is limited to a single aspect of a single claim, and that co-inventors need not have collaborated at the same time to be named.

Specification Focus on one Embodiment Cannot Limit the Invention if Specification Contemplates Other Embodiments

While much of the specification focuses on a scheme involving patient-identifying information, the Court held that a specification’s focus cannot be limited on one particular embodiment where it expressly contemplates other embodiments or purposes. The specification clearly disclosed that sorting and storage could be done in a number of ways, not only by patient-identifying information. The Court held that the district court erred when it determined that the specification limited the invention to storing prescription containers based on patient name and slot availability. Thus, the Court reversed the grant of summary judgment and remanded the case for further proceedings.

Phillips Claim Construction Standard Applies to Ex Parte Reexam After Patent Expires

The Court held that the Board improperly continued to apply the BRI standard following the expiration. While the examiner properly applied the BRI prior to expiration, the BRI standard no longer applies the moment the patent expires – even if it means the Board applies a different standard than the examiner.

The Federal Circuit Will Not Re-Weigh Evidence Considered By The Board in IPR Appeals

The Court noted that all of Warsaw’s arguments related to the Board’s findings of fact, and were therefore reviewed for “substantial evidence.” The Board’s reconciliation of the potentially conflicting descriptions in the reference amounted to a re-weighing of evidence, which is not permitted under the standard of review. The Court also affirmed the Board’s motivation to combine analysis. Finally the Court summarily rejected Warsaw’s arguments presented for the first time on appeal.

Federal Circuit Revisits Scope of Markush Group Claim Elements, Vacates Summary Judgment on Erroneous Construction

However, in spite of the Court’s determination that the Markush group was closed, the Court agreed with Multilayer that the use of the transitional phrase “consisting of” does not necessarily suggest that a Markush group is closed to mixtures, combinations, or blends. Although recognizing that, typically, there exists a presumption that Markush groups are closed to “blends,” the Court acknowledged that the presumption can be overcome by a combination of other claim language and the specification itself. Here, the Court found explicit evidence of an intent to include blends insofar as the Markush group itself included blends and categories of resins that overlap, and certain dependent claims required layers of film to comprise blends of at least two resins.

Negotiation to Sell Products Outside the US is not an Infringing Offer for Sale

The Federal Circuit again addressed whether Pulse’s domestic sales activities were either a sale or an offer for sale in the U.S. While the patent statute does not define “sale,” the Court has previously held that it carries its ordinary meaning, including the transfer of title or property. Further, a “sale” must be understood in view of the strong policy against extraterritorial liability for patent infringement. Here, no sale occurred in the U.S., because the final formation of a contract and all elements of performing the contract occurred outside the U.S.

District Court may consider burden of litigation in deciding whether to stay a patent case

Murata argued that the district court should have relied on the traditional three-factor test, which does not consider the burden of litigation on the court and the parties. By considering the burden of litigation, it alleged that the court committed a reversible error. The Court disagreed, ruling that courts have broad discretion to manage their own dockets, including the power to grant a stay of a case. This discretion does not come from statute, but is an inherent power of the courts. Thus, a district court may consider other factors beyond the three-factor stay test at its discretion. Further, the legislative history of the AIA reveals that Congress intended IPR’s to reduce the burden of litigation.

CAFC: Software means plus function claims Indefinite for failure to disclose algorithm

The Court also affirmed that the this means-plus-function term was indefinite. In the case of computer-implemented functions, the specification must disclose an algorithm for performing the claimed function. The patents-in-suit did not disclose an operative algorithm for the claimed “symbol generator.” A patentee cannot claim a means for performing a specific function and then disclose a “general purpose computer” as the structure performing that function. The specification must disclose an algorithm in hardware or software for performing the stated function.

CAFC: Reasonable Litigation Defenses No Defense to Willfulness; Permanent Injunction Denial Was Abuse of Discretion

Under the Federal Circuit’s reading of Halo, companies can no longer rely solely on reasonable litigation-inspired defenses to prevent a finding of willfulness… The Federal Circuit also found that the district court abused its discretion in failing to issue a permanent injunction. While there is a public interest in safer generators, there is also a public interest in the security of patent rights. The patent owner presented evidence that it had sufficient production abilities to satisfy market demand for the product. Finally, in similar contexts, Congress has expressly indicated that permanent injunctions may issue to prevent infringement of other life-saving goods like pharmaceuticals.

CAFC: PTAB Improperly Shifted Burden of Proof on Obviousness to Patent Owner in IPR

The Federal Circuit reversed the Board’s obviousness ruling, finding that the Board had improperly shifted burdens onto Magnum, the Patent Owner, in several instances. For example, Petitioner McClinton asserted that a motivation to combine argument made with respect to a first set of prior art references was also applicable to a second set of prior art references, but did not explain why the rationale applied to both sets of references. The Federal Circuit found that the Board improperly “expected [the Patent Owner] to explain, and faulted [the Patent Owner] for allegedly failing to explain” why the motivation to combine argument made by Petitioner based on the first set of prior art references would not be applicable to the second set of prior art references. The Board’s obviousness finding thus constituted an improper shifting of the burden to Magnum, the patentee, to prove that the claimed invention would not have been obvious.