08/29/2014
 
 
 
By: Karthik Subramanian, Contributor 
 
TitleLochner Tech., LLC v. Vizio, Inc., No. 2013-1551 (Fed. Cir. June 27, 2014) (non-precedential).
IssueLochner takes issue with the district court’s belief that use of an open-ended term “including” requires patentees to disclose the recited as well as unrecited elements that are present in the accused infringing products.
Lochner Tech., LLC at *15.
Holding“After careful consideration, we find that the district court erred when it assumed that use of the term “including” somehow trumped consideration of the specification and prosecution history and displaced application of standard claim construction principles."
Id. at *16.
 
 
08/27/2014
Category: Damages  
 
 
 
 By: Eric Paul Smith, Contributor
 
TitleRectractable Tech., Inc. v. Becton Dickinson & Co., No. 2013-1567 (Fed. Cir. Jul. 7, 2014).
IssueWhether "[the Federal Circuit's] mandate, reversing the infringement verdict [for one product but not the other], required the district court to conduct new damages proceedings because the original judgment is inconsistent with that mandate."
Retractable Tech. at *4.
Holding"The damages award was within the scope of the appealed judgment and thus was incorporated into the mandate when Becton failed to raise the issue of a remand to consider parsing damages by product." Id. at *8. "[T]he mandate rule forecloses the relief that Becton seeks . . . ." Id. at *11.
 
 
08/25/2014
Category: Double Patenting  
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor
 
TitleAbbvie Inc. v. Kennedy Inst. of Rheumatology Trust, No. 2013-1545 (Fed. Cir. Aug. 21, 2014).
Issues
[1: : ODP and Uruguay Round] Kennedy argues that the statutory and policy rationales underlying the obviousness-type double patenting doctrine no longer exist and the doctrine should be discarded. More specifically, Kennedy contends that the Uruguay Round Agreement Act (URAA), Pub. L. 103-465, 108 Stat. 4809, effective June 8, 1995, and its implementation of a 20-year period of patent protection that runs from a patent’s earliest claimed priority date, eliminated the need for the obviousness-type double patenting doctrine.
Abbvie Inc. at *10.
[2: ODP and Genus-Species Patent Family] [Whether] “[…]the differences in subject matter between the claims” of the ’766 and ’442 patents render their claims “patentably distinct” because the ’442 patent applies to [‘][treating] patients with active disease[,’] [which is a species of the ‘766 patent genus characterization as ‘treating all patients in need thereof’].
Id. at *21 (internal citations omitted, text added).
Holdings
[1: : ODP and Uruguay Round] Although this court has recognized that the doctrine of obviousness-type double patenting is less significant in post-URAA patent disputes, we have also recognized its continued importance. […] We now make explicit what was implicit in Gilead: the doctrine of obviousness-type double patenting continues to apply where two patents that claim the same invention have different expiration dates. We hold that Kennedy is not entitled to an extra six years of monopoly solely because it filed a separate application unless the two inventions are patentably distinct.
Id. at *12-13.
[2: ODP and Genus-Species Patent Family] [S]pecies are unpatentable when prior art disclosures describe the genus containing those species such that a person of ordinary skill in the art would be able to envision every member of the class. Here, we think it is clear that a reader of the ’766 patent could have easily envisioned a species limited to sicker patients [because the disclosure of the genus in the ‘766 parent patent relied on a T-14 study that serves as the basis for the species in the ‘422 child patent].
Id. at *24 (text added).
 
 
 
08/22/2014
Category: Claim Construction  
 
 
 
By: Roy Rabindranath, Contributor 
 
TitleAugme Tech., Inc. v. Yahoo! Inc. (Fed. Circ. June 20, 2014).
Issue[Whether] the district court's determination [in its summary judgment ruling] that Yahoo!'s accused systems do not infringe the Augme patents either literally or under the doctrine of equivalents [was erroneous].
Augme Tech., at *2 (text added).
Holding[Because the district court correctly concluded that the] plain and ordinary meaning of ["]embedded code["] is code written into the HTML code of the web page [, and not linked to another web page, it properly ruled that Yahoo! 's accused system did not infringe the Augme patent literally or under the doctrine of equivalents].
Id. at *10 (text added). 
 
 
 
08/19/2014
Category: Claim Construction 
 
 
 
By: Abby Lin, Contributor 
 
TitleGemalto S.A. v. HTC Corp., No. 13-1397 (Fed. Cir.June 19, 2014).
Issues
1) [Integrated Circuit Claims Claim Construction:] Gemalto first challenges the district court’s construction of the “memory” limitation in the integrated circuit card claims to require all program memory on a single semiconductor substrate (or chip). Gemalto does not dispute that an integrated circuit card is “a card containing a single semiconductor substrate having a central processing unit and memory,” J.A. 31, but contends that the card should be able to access applications stored in off-chip memory, i.e., memory located on chips other than the chip containing the processor.
Gemalto, at *8 (text added).
2) [Programmable Device Claims Claim Construction:] Gemalto asserts that the term should be construed broadly to mean “a device that can execute a computer program.” Appellant’s Br. 37. Gemalto suggests that its proposed construction reflects the ordinary meaning of “programmable device” to one of skill in the art.
Id. at *13.
3) [Infringement by Doctrine of Equivalents:] Gemalto argues that the accused devices infringe the asserted claims, as construed by the district court, under the doctrine of equivalents… Gemalto contends that the accused devices infringe under the doctrine of equivalents when they temporarily load program instructions from off-chip memory into onchip cache memory before execution.
Id. at *17.
Holding
1) [Integrated Circuit Claims Claim Construction:] The claim language does not support Gemalto’s theory. The claim language requires a “memory” that stores an “application” and a “processor” that is coupled to the memory. ’317 patent col. 19 ll. 42, 43, 64. The specification demonstrates that the entire purpose of the invention was to enable the application to be stored within the memory on the chip of the integrated circuit card…. In short, we agree with the district court that the memory recited in the integrated circuit card claims should be construed as “all program memory,” which means “sufficient memory to run the Java code [i.e., the application and interpreter] in accordance with the patentee’sinvention.”
Id. at *8, 13 (text added).
2) [Programmable Device Claims Claim Construction:] In any event, Gemalto’s central problem is that the limitation is not “programmable device” but “memory.” The meaning of terms appearing in the ’727 patent must be construed in light of the same terms recited in the ’317 patent. All three asserted patents are directly related … Statements made by the applicant concerning the “memory” limitation in the ’317 patent’s claims therefore apply with equal force to the “memory” limitation in the ’727 patent’s claims with the same limitation.
Id. at *14 (text added).
We thus agree with the district court that the programmable device of claim 3 of the ’727 patent should be construed as “a single semiconductor substrate integrating electronic circuit components that includes a central processing unit and all program memory making it suitable for use as an embedded system.” J.A. 33.
Id. at *16-17 (text added).
3) [Doctrine of Equivalents.:] Establishing infringement under the doctrine of equivalents requires particularized testimony and linking argument as the equivalence between the claim limitation and the alleged equivalent. Texas Instruments, 90 F.3d at 1567. Such testimony is missing here.
Id. at *19 (text added).
Gemalto provided no testimony asserting that the difference in functionality between cache memory and permanent memory is in fact insubstantial… Absent any testimony suggesting that cache memory is equivalent to permanent memory, no reasonable fact finder could find that the two types of memory function in substantially the same way to achieve substantially similar results
Id. at *19-20 (text added).
 
 
 
08/18/2014
Category: Inequitable Conduct 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor   
 
TitleApotex Inc. v. UCB, Inc., No. 2013-1674 (Fed. Cir. Aug. 15, 2014).
IssueApotex argues that merely advocating a particular interpretation of the prior art cannot support an inference of deceptive intent [and that there is no duty to disclose an inventor’s own suspicions or beliefs regarding relevant prior art.].
Apotex Inc. at *16 (text added).
HoldingThe district court’s findings regarding materiality and intent are not clearly erroneous, and its ultimate determination that Dr. Sherman [, the sole inventor of the patent at issue,] breached his duty of candor, good faith, and honesty before the PTO was not an abuse of discretion [because Dr. Sherman was aware that prior art, Univasc, was made according to his claimed process, concealed this knowledge from the PTO, and misrepresented the nature of Univasc and other prior art through his counsel’s arguments and Dr. Lipp’s declaration.]
Id. at *12-13 (text added). 
 
 
 
08/15/2014
Category: Claim Construction   
 
 
 
 
By: Christian Hannon, Contributor 
 
TitleRotatable Tech. v. Motorola Mobility, No. 2014-1042 (Fed. Cir. June 27, 2014)(non-precedential).
IssueRotatable appeals, among other things, that the preamble term “selectively rotating” is not a claim limitation and that, if the term is a claim limitation, the distrcit court erred in its construction of the term.
Rotatable Tech. at *4.
HoldingBecause the intrinsic record emphasizes the importance of “selectively rotating” and because the prosecution history shows that the patentee relied on the term “selectively rotating” to distinguish the claimed invention from prior art, the district court correctly determined that “selectively rotating” is a claim limitation.
Id. at *2.
 
 
 
08/12/2014
Category: Civil Procedure   
 
 
 
 By: John Kirkpatrick, Contributor
 
TitleAbbVie Deutschland GMBH & Co. v. Janssen Biotech, Inc., No. 2013-1338, 1346 (Fed. Cir. July 1, 2014).
Issues
[1] AbbVie argues that Centocor’s [(Jannsen's)] invalidity defenses as to [U.S. Patent 6,914,128] should not have been tried to the jury because of the preclusive effect of the [Board of Patent Appeals and Interferences'] prior judgment.
AbbVie at *14 (text added).
[2] [W]hether the ['128 patent] sufficiently otherwise describe[s] representative species to support the entire genus.
Id. at *22-23 (text added).
[3a] [T]hat the district court’s exclusion of the interference file history from evidence allowed Centocor to relitigate invalidity [for lack of written description support] from a clean slate.
Id. at *28 (text added).
[3b] [T]hat the district court erred in excluding expert testimony on the detailed reasoning of the PTO on the issues of written description, enablement, and obviousness during ex parte prosecution.
Id. at *28 (text added).
[3c] [T]hat the prejudicial effect of the contested evidentiary rulings was exacerbated by the jury instruction that new information presented at trial that was not considered by the PTO would make it easier for Centocor to carry its burden of proving invalidity by clear and convincing evidence.
Id. at *30 (text added).
Holdings
[1] Because a district court can make a de novo determination of facts upon the submission of new evidence, a Board decision that is reviewed under [35 U.S.C. § 146 (2006)] is not a “binding final judgment” to preclude a losing party from litigating the same or related issues in a parallel proceeding.
AbbVie at *16-17 (text added).
[2] [M]erely drawing a fence around a perceived genus is not a description of the genus. One needs to show that one has truly invented the genus, i.e., that one has conceived and described sufficient representative species encompassing the breadth of the genus.
Id. at *23 (text added).
[3a] [W]e need only address whether the evidentiary rulings affected AbbVie’s substantive rights concerning [the verdict for lack of written description support]. The evidence of the interference or other proffered evidence concerning obviousness is of little probative value to the written description determination.
Id. at *28 (text added).
[3b] In view of the record as a whole, including the substantial evidence of structural differences between Stelara [(the alleged infringing drug patented by Centocor)] and the antibodies [of AbbVie's patents] and the fact that the jury considered the number of structurally similar antibodies disclosed in AbbVie’s patents, [...] the district court did not abuse its discretion in excluding [testimony that the PTO concluded that the written description requirement was met.]
Id. at *30 (text added, internal citations removed).
[3c] “[I]f the PTO did not have all material facts before it, its considered judgment may lose significant force” and that “the challenger’s burden to persuade the jury of its invalidity defense by clear and convincing evidence may be easier to sustain.” [...] "[T]he jury may be instructed to evaluate whether the evidence before it is materially new, and if so, to consider that fact when determining whether an invalidity defense has been proved by clear and convincing evidence."
Id. at *32 (text added, quoting Microsoft Corp. v. i4i Ltd. Partnership, 131 S.Ct. 2238, 2251 (2011)).
 
 
 

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