Welcome to Winston & Strawn’s Federal Circuit Patent Decision Summaries. This bulletin provides a short summary of, and links to, the precedential patent cases decided by the Federal Circuit last week. We hope that these summaries are useful in keeping you updated on the Federal Circuit’s patent decisions.

As you may be aware, the U.S. Court of Appeals for the Federal Circuit has recently updated its Web site and relocated its bank of opinions.  As a result the links in Winston & Strawn’s Federal Circuit Patent Decision Summaries issued prior to July 15, 2010 are broken.  We apologize for any inconvenience.

Future summaries will link directly to described opinions as in the past. In order to provide access to the opinions listed in previous issues of our newsletter, we are offering two options.  You may either use the following link to find a case directly from the Court’s Web site or you may email Winston & Strawn LLP with the name of the case and we will forward the opinion to you within 24-48 hours.  Thank you in advance for your understanding.

A claim construction that renders asserted claims facially nonsensical “cannot be correct.”

Beckton, Dickinson & Co. v. Tyco Healthcare Group, LP, Nos. 2009-1053,-1111 (Fed. Cir. July 29, 2010).

The patentee sued the alleged infringer on a patent involving safety needles for blood collection.  The district court issued a claim construction order finding that the “hinged arm” and the “spring means” were two separate physical structures.  After a jury trial and infringement verdict, the district court denied the alleged infringer’s motion for judgment as a matter of law.  On appeal, the Federal Circuit reversed.

Without addressing whether the spring limitation was a means-plus-function limitation, the court explained that: “Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.”  Further, the patentee’s contention that these two limitations could be represented by the same structure would have resulted in a facially nonsensical claim construction, which cannot be correct.  Because these limitations must be represented by distinct structures, the all elements rule required that the patentee show that the accused product had both of these structures.  In this case, the patentee could not make that showing, and the district court should have granted judgment as a matter of law.

Judge Gajarsa dissented.  He would have analyzed the claim limitation “spring means.”  Because the specification did not require two structures, he would have broadly read the claims to read on the accused product “regardless of whether those elements are encompassed in one or two structures.”

A copy of the opinion can be found here.

The simple inclusion of a novel, yet functionally unrelated limitation, such as one requiring “informing” an individual of the properties of the claim, adds no novelty to that claim for anticipation purposes.

King Pharmaceuticals, Inc. v. Elan Pharmaceuticals Inc., No. 2009-1437 (Fed. Cir. Aug. 2, 2010).

The assignor owned two patents directed to the muscle relaxant drug Metaxalone.  The alleged infringer was a generic maker of Metaxalone.  While the assignor’s suit for infringement was pending, the assignor transferred all interests in the two patents to the assignee.  The assignee filed a separate suit against the alleged infringer.  The district court consolidated the lawsuits and maintained the alleged infringer’s invalidity contentions against both the assignor and the assignee.  The district court found all the claims at issue invalid on summary judgment. 

The Federal Circuit affirmed the finding of invalidity against the assignee.  The court criticized the district court’s invalidity analysis for focusing on only one part of a limitation to invalidate the claims under In re Bilski.  Because “the [Supreme] Court has made clear that it is inappropriate to determine the patent-eligibility of a claim as a whole based on whether selected limitations constitute patent-eligible subject matter,” the district court used an incorrect analysis. 

Nonetheless, among other things, some of the claims at issue were still invalid under §102.  The sole potential source of novelty was a limitation by which the patient was “informed” about the existence of an inherent property of that method.  The “‘informing’ limitation add[ed] no novelty to the method, which is otherwise anticipated by the prior art.” The patent laws do not permit the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations.

A copy of the opinion can be found here.

Claim construction arguments were waived when new constructions were argued only after the claims had been construed and the jury returned a verdict.

Enovsys LLC v. Nextel Communications Inc., No. 2009-1167 (Fed. Cir. Aug. 3, 2010).

The patents-in-suit were directed at security with respect to the use of global positioning satellites (GPS) to determine the physical location of mobile devices, such as cellular phones.  After a jury trial, the district court found the patents infringed.  The accused infringer appealed, arguing that the patentee lacked standing and that the accused infringer was entitled to judgment as a matter of law under the correct claim construction of various claim terms.  The Federal Circuit affirmed.

The Federal Circuit first addressed the jurisdictional issue of standing, finding that the patentee had standing to sue and that a co-inventor's ex-wife did not have any ownership interest in the patents-in-suit.  Specifically, the court accorded preclusive effect to a California divorce decree in which the former couple declared that they had no community property.  This declaration confirmed that the former wife did not have an ownership interest in the patents-in-suit.

The Federal Circuit then held that the accused infringer waived two claim construction arguments because the district court's claim constructions were never challenged and the arguments were only made after the jury returned its verdict.  Specifically, the accused infringer waived its argument that the accused device did not have the corresponding structure defining a means-plus function claim element, a narrower construction than the district court’s construction.  The accused infringer also waived its argument that the claim term "pre-authorized" applied with respect to a particular mobile device.  This claim term had already been construed and the accused infringer had never objected to the construction or sought clarification until the jury had returned a verdict.

A copy of the opinion can be found here.

When a commercial product meets all of the claim limitations, a comparison to that product may support a finding of infringement.

Adams Respiratory Therapeutics, Inc. v. Perrigo Co, No. 2010-1246 (Fed. Cir. Aug. 5, 2010).

The district court entered a judgment that the accused infringer’s Abbreviated New Drug Application (ANDA) product would not infringe the asserted claims of the patent-in-suit.  The Federal Circuit vacated the judgment and remanded.

The district court construed the claim limitation “equivalent” to mean “within 80% to 125% of the value with which it is being compared, at a 90% confidence interval,” mimicking the FDA’s bioequivalence guidelines.  The patentee had never adopted or mentioned a confidence interval.  The Federal Circuit held that requiring such a confidence interval “would inappropriately raise the bar for establishing infringement” and provided its own construction of “equivalent,” omitting the confidence interval requirement.

The court also rejected the district court’s conclusion that the patentee could not show infringement by comparing the accused product directly to the commercial embodiment.  “[W]hen a commercial product meets all of the claim limitations, then a comparison to that product may support a finding of infringement.” 

Lastly, the patentee asserted infringement under the doctrine of equivalents of a claim which included a precise amount of active ingredient.  The accused infringer argued that this value created an absolute minimum that the doctrine of equivalents could not change or expand.  The Federal Circuit rejected this argument explaining that “[t]he mere existence of a numerical value or range in a claim, absent more limiting language in the intrinsic record, does not preclude application of the doctrine of equivalents.”  Therefore, the court reversed the grant of summary judgment of noninfringement under the doctrine of equivalents.

A copy of the opinion can be found here. 

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