07/31/2014
 
 
 
 By: Roy Rabindranath, Contributor
 
TitleBraintree Lab., Inc. v. Novel Lab., Inc. (Fed. Circ. April 22, 2014).
Issues
[1] [Whether the district court erred in construing the limitations of U.S. Patent 6,946,149 (a)] "purgation" to mean "an evacuation of a copious amount of stool from the bowels after oral administration of the solution [....and (b)] "clinically significant electrolyte shifts" to require "alterations in blood chemistry that are outside the normal upper or lower limits of their normal range and other untoward effects.
Braintree Lab., at *5, 8 (text added, internal citations omitted).
[2] [Whether] the district court's grant of summary judgment of infringement [, based on the above claim construction, in favor of Braintree was erroneous].
Id. at *12 (text added).
[3] [Whether] the district court [erred in finding] that [the] Hechtor [reference] does not anticipate the asserted claims of the '149 patent....[and] in finding that Novel failed to demonstrate that the asserted claims of the '149 patent would have been obvious at the time of the invention.
Id. at *14, 16 (text added).
Holdings
[1(a)] In construing claim terms, the analytical focus must begin and remain centered on the language of the claims themselves, for it is that language that the patentee chose to use to "particularly point out and distinctly claim the subject matter which the patentee regards as his invention." The asserted claims here only require that the compositions "induce" (i.e., bring about or start) diarrhea. The claims do not contain language that requires achieving a fully cleansed colon for a colonoscopy. Thus, while cleansing the goal specifically articulated in the composition, it is not a claim requirement.
Braintree Lab., at *6-7 (text added, internal citations omitted).
[1(b)] Under our precedent, the patentee's lexicography must govern the claim construction analysis. We reverse the district court's claim construction and construe "clinically significant electrolyte shifts" to be "alterations in blood chemistry that are outside the normal upper or lower limits of their normal range or other untoward effects.
Id. at *9 (text added, internal citations omitted).
[2] [We] conclude that there remains a genuine dispute as to whether SUPREP avoids producing any clinically signficant electrolyte shifts in a patient populuation. We vacate the district court's grant of summary judgment of infringement, and we remand this matter to the district court for further factual findings concerning whether such alterations qualify as "clinically significant electrolyte shifts" in accordance with the proper claim construciton articulated here within.
Id. at *12 (text added).
[3] "Novel 'did not show proof that met the clear and convincing standard' that the asserted claims were ancticipated by the Hechter [reference]." Id. at *13 (text added, internal citations omitted). "[Moreover, as] the district court correctly noted, Novel did not prove that one of skill in the art would have been motiviated to combine [16] references. In other words, it failed to prove a 'plausible rationale as to why the prior art references would have worked together.'" Id. at *15-16 (text added).   

 
07/29/2014
Category: Civil Procedure   
 
 
 
 By: Abby Lin, Contributor 
 
CaseSource Vagabond Sys. Ltd. v. Hydrapak, Inc., No. 2013-1270, -1387 (Fed. Cir. June 5, 2014).
IssuesSource Vagabond Systems, Ltd., Pearl Cohen Zedek Latzer LLP, Guy Yonay, and Clyde Shuman (collectively, “Source” or “Appellants”) appeal the decision of the district court sanctioning Source under Federal Rule of Civil Procedure 11 (“Rule 11”) for bringing a frivolous patent infringement suit against Hydrapak, Inc. (“Hydrapak”) [based on [1] an unsupported proposed claim construction and [2] a literal infringement allegation lacking any evidentiary support.]
Source Vagabond Sys. Ltd. at *2 (text added).
Holdings
[1] Source was required to “perform an objective evaluation of the claim terms” to satisfy its obligation to conduct a reasonable pre-suit evaluation. [...] By proposing a definition that ignores the canons of claim construction, Source did not meet that standard. The district court did not abuse its discretion in imposing Rule 11(b)(2) sanctions based upon Source’s frivolous claim construction arguments.
Id. at *15-16 (internal citations omitted).
[2] Since Source’s claim construction is […] inadequate, and, indeed, the literal infringement claim “lacked evidentiary support no matter how the claim was construed,” […], the district court did not abuse its discretion in imposing Rule 11 sanctions.
Id. at *17.
 
07/28/2014
Category: Injunctions 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor
 
TitleePlus, Inc. v. Lawson Software, Inc., No. 2013-1506, -1587 (July 25, 2014).
IssuesThis case raises two issues. [1: Injunction] The first is whether an injunction can continue after the PTO has cancelled the only claim on which the injunction was based. [2: Civil Contempt Remedies] The second is whether civil contempt remedies based on the violation of an injunction are appropriate when the injunction has been overturned on direct appeal.
ePlus, Inc. at *3.
Holdings
[1: Injunction] Under these authorities, there is no longer any legal basis to enjoin Lawson’s conduct based on rights that claim 26 of the ’683 patent previously conferred as those rights have ceased to exist. The PTO found claim 26 invalid, we affirmed that decision, our mandate issued, and the PTO cancelled the claim. Claim 26 no longer confers any rights that support an injunction against infringement.
Id. at *11.
[2: Civil Contempt Remedies] We conclude that the compensatory award for the violation of the injunction must be set aside in light of the cancellation of claim 26 [because the modified injunction was not final].
Id. at *18 (text added).
 
 
07/25/2014
Category: 103 
 
 
 
 By: Christian Hannon, Contributor 
 
TitleSTC.UNM v. Intel Corp., No. 2013-1241 (Fed. Cir. June 6, 2014).
Issue[Whether] Sandia can[] be involuntarily joined under Federal Rule of Civil Procedure 19 [to allow STC to assert the '998 patent against Intel].
STC.UNM at *2 (text added).
Holding[T]his court holds that the right of a patent co-owner to impede an infringement suit brought by another co-owner is a substantive right that trumps the procedural rule for involuntary joinder under Rule 19(a).
Id. at *11.
 
07/23/2014
Category: 102  
 
 
 
 By: John Kirkpatrick, Contributor 
TitleSuffolk Tech., LLC v. AOL, Inc., No. 13-1392 (Fed. Cir. May 27, 2014).
Issues
[1a] Suffolk argues that the district court erred in construing the claim term “generating said supplied file” [as recited in dependent claim 6] as “creating or tailoring a file, as distinct from selecting an existing file, in dependence upon the received identification signal.” Suffolk’s position is that the generated file could depend on the content of the requesting web page and not just the received identification signal.
Suffolk Tech. at *6 (text added, internal citation and emphasis removed).
[1b] Suffolk argues that the specification implicitly defines “generating said supplied file” [as depending on the content of the requesting page] and that the district court erred in ignoring that implicit definition.
Id. at *7 (text added).
[1c] Suffolk argues that the district court’s construction effectively excludes the preferred embodiment that this claim language was intended to cover.
Id. at *8.
[2a] According to Suffolk, [a Usenet Post is not prior art because] the Post’s audience was not those of ordinary skill in the art and locating the Post would be too difficult.
Id. at *10 (text aded).
[2b] [S]erious questions undermining the reliability and accuracy of the Post should have been submitted to the jury.”
Id. at *12 (text added).
[2c] [T]he district court improperly excluded testimony from [Suffolk's] validity expert.
Id. at *13 (text added).
[2d] According to Suffolk, there are genuine factual issues concerning whether the Post disclosed every limitation in the contested claims.
Id. at *15.
Holdings
[1a] [T]he undisputed construction of “identification signal”—“digital information that identifies the source, origin, or location of a file”—says nothing about the content of the requesting page.
Suffolk Tech. at *6 (text added, emphasis removed).
[1b] [T]he specification, when viewed in context, supports the district court’s construction that “generating said supplied file” depends on the received identification signal and not the content of the requesting web page.
Id. at *8 (text added).
[1c] [The preferred embodiment is not excluded] when the entire description of the preferred embodiment is considered.
Id. (text added).
[2a] [T]he record indicates that those of ordinary skill in the art actually [at the time] were using such newsgroups [and] a printed publication need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication.
Id. at *10-11 (text added, internal citation removed).
[2b] [T]he asserted evidentiary weaknesses in the Post are insufficient, without more, to create a genuine issue of material fact.
Id. at *13 (text added).
[2c] [T]he district court did not abuse its discretion in [excluding testimony when the expert goes from having no opinion concerning a claim to having an opinion because the expert] did opine on the validity of dependent claim 6 in his initial report and the district court’s construction did not vary greatly from the parties’ proposals.
Id. at *14 (text added).
[2d] Google bears the burden to show that there are no genuine issues of material fact. It has met that burden. And Suffolk’s attorney arguments, with no affirmative evidence, are insufficient to undermine Google’s showing.
Id. at *15.  
 
 
07/21/2014
Category: Civil Procedure    
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleArlington Ind., Inc. v. Bridgeport Fittings, Inc., No. 2013-1357 (Fed. Cir. July 17, 2014).
IssueBridgeport argues that we have jurisdiction over its appeal [for contempt of an injunction] under both § 1292(c)(1) and § 1292(c)(2).
Arlington Ind., Inc. at *5.
HoldingBecause the district court’s order simply interpreted the 2004 Injunction and is not an otherwise final, appealable judgment, we dismiss the appeal for lack of jurisdiction.
Id. at *5.
 
07/19/2014
Category: Post-Grant Proceedings  
 
 
 
 By: Karthik Subramanian, Contributor 
 
TitleIn re Bd. of Tr. of the Univ. of Ill., No. 2014-122 (Fed. Cir. May 5, 2015) (non-precedential).
Issue“The Board of Trustees for the University of Illinois (“University”) petitions for a writ of mandamus directing the United States Patent and Trademark Office (“PTO”) and its Patent Trial and Appeal Board (“Board”) to withdraw its orders instituting inter partes review in cases IPR2013-401 and IPR2013-404.”
In re Bd. of Tr. of the Univ. of Ill. at *1.
Holding“The petition is denied [because a party seeking issuance of a writ to vacate an inter partes review cannot establish a clear and indisputable right to relief].”
Id. at 3 (text added).
 
 
07/16/2014
Category: 101   
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleDigitech Image Tech., LLC v. Electronics for Imaging, Inc., No. 2013-1600, -1601, -1602, -1603, -1604, -1605, -1606, -1607, -1608, -1609, -1610, -1611, -1612, -1613, -1614, -1615, -1616, -1617, -1618 (Fed. Cir. July 11, 2014).
Issues[1] First, Digitech asserts that the district court erred in finding that the device profile claims are directed to a collection of data that lacks tangible or physical properties. [2] Second, Digitech argues that the district court erred in finding that the asserted method claims encompass an abstract idea and are not tied to a specific machine or apparatus.
Digitech Image Tech., LLC at *6 (text added).
Holdings
[1] We […] hold that the device profile claims of the ’415 patent do not encompass eligible subject matter as required by section 101 and are therefore not patent eligible [because the claimed “device profile” is a collection of intangible color and spatial information, and there is nothing in the claims that require said information to be in a tangible medium].
Id. at *10.
[2] [W]e hold that the process described in the asserted claims is directed to an abstract idea and is not patent eligible under section 101 [because the claims recite an abstract process of gathering and combining data that does not require input from a physical device].
Id. at *13.
 
 

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