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 Cir. June 27, 2014) (non-precedential).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.
 
 
08/10/2014
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleScriptro, LLC v. Innovation Asso., Inc., No. 2013-1561 (Fed. Cir. Aug. 6, 2014).
IssueWe have a narrow issue: whether the absence of sensors from the claims at issue means that those claims are unsupported by the written description as a matter of law [in a summary judgement motion].
Scriptro, LLC at *7 (text added).
Holding[T]he specification itself creates a genuine issue of material fact on this question [that would necessitate denial of summary judgment]: a trier of fact could find that a skilled artisan would understand the specification to disclose a system that relies on the computer memory, without sensors, to fulfill the central purpose of keeping track of slot use by particular customers and slot availability, with sensors optionally providing confirmation only.
Id. at *11(text added).
 
 
 
02/26/2014
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleGlaxoSmithKline, LLC v. Banner Pharmacaps, Inc., No. 2013-1593, -1594, -1595, -1598 (Fed. Cir. Feb. 24, 2014).
IssueThis appeal presents a single issue: whether, under what is now 35 U.S.C. § 112(a), the written description of the ’467 patent adequately supports the claims to “solvates” of dutasteride[, in the claim recitation, “pharmaceutically acceptable solvate”]. […] The only argument actually developed in the [defendant’s] brief is that there is no adequate description of “solvates,” whether that term is limited to crystalline structures (as Defendants argue) or covers crystalline and non-crystalline structures, produced through reaction with a solvent or precipitation or crystallization from a solution (as the parties understand the district court’s construction).
GlaxoSmithKline, LLC at *7-8 (text added).
HoldingWe conclude that Defendants have not properly presented any other contention in this court, especially given the lack of elaboration on the distinct issues that would be raised by a written- description challenge to the phrase “pharmaceutically acceptable.” On the sole issue properly presented, we reject Defendants’ challenge. Under either the district court’s claim construction or Defendants’ claim construction, the claim term “solvate” refers to a molecular complex defined by structure and by the process of creating it, not by what the molecule does.
Id. at *8.
 
10/30/2013
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleSynthes USA, LLC v. Spinal Kinetics, Inc., No. 2013-1047, -1059 (Fed. Cir. Oct. 29, 2013).
Issues
[1] [With regards to phrase “the third plate including a plurality of openings,”] [t]he parties appear to agree that “grooves” are a species of “opening,” but do not agree that “grooves” constitute an adequate disclosure to claim all openings that may be used in the cover plates to anchor the fiber system. In other words, the jury was asked to determine whether the written description disclosure of “grooves” “reasonably convey[ed] to those skilled in the art that the inventor had possession of [an intervertebral implant that could utilize any sort of opening located anywhere on the cover plates to anchor the fiber system] as of the filing date.” Ariad, 598 F.3d at 1351.
Synthes at *14 (text added).
[2] Synthes contends that, because we remarked in Bilstad that the “mechanical world” is a “fairly predictable field,” SK had to satisfy a heightened burden to demonstrate unpredictability. See Bilstad, 386 F.3d at 1126. 18-19
Id. at *18-19.
Holdings
[1] [A]s we stated in Bilstad: [i]f the difference between members of [a species] is such that [a] person skilled in the art would not readily discern that other [species] of the genus would perform similarly to the disclosed members, i.e., if the art is unpredictable, then disclosure of more species is necessary to adequately show possession of the entire genus. Id. at 1125. […] Here, SK presented its case to the jury, and the jury inferred that, in the field of intervertebral implants, the disclosure of peripheral grooves does not adequately demonstrate possession of the entire genus of possible openings [because the specification was silent on mentioning other "opening" species, and the Expert Testimony supported the finding that other species under the genus are not fairly predictable].
Synthes at *18 (text added).
[2] [The comment in Bilstead is not a blanket statement for the entire mechanical world because,] [a]s we noted in Ariad, there are no “bright-line rules governing, for example, the number of species that must be disclosed to describe a genus claim, as this number necessarily changes with each invention, and it changes with progress in a field.” Ariad, 598 F.3d at 1351.
Id. at *19 (text added).
 
08/29/2013
 
By: Idlir Fida from Vancouver, Canada, Creative Commons
 
 By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleIn re Bimeda Research & Dev. Ltd., 2012-1420 (Fed. Cir. July 25, 2013).
Issue"[T]he ’400 patent’s disclosure broadly described an invention that was free from anti-infectives, and also noted that Example 1 described an exemplary embodiment which did not include acriflavine as an ingredient. [The Patentee] therefore contended that an ordinary artisan, who would have been well aware that acriflavine could be used to prevent mastitis, would understand that its antiinfective-free invention could also be acriflavine- free." In re Bimeda, at *4 (text added).
Holding"[W]here the patent’s disclosure describes the exclusion of a broad genus, claims to embodiments which exclude particular species are only supported if the disclosure offers some guidance or “blaze marks” to guide the skilled artisan towards excluding that particular species." Id. at *5 (affirming the PTAB holding, citing In re Ruschig, 379 F.2d 990 (CCPA 1967)).
 

© 2000-2014, Journal of the Patent & Trademark Office Society
Disclaimer & Privacy Policy