In Re Lewis Ferguson, Darryl Costin & Scott C. Harris Federal - - PDF document

Nartron Corp., v. Schukra U.S., Inc.,

Federal Circuit 2008-1363, March 5, 2009

In Re Lewis Ferguson, Darryl Costin & Scott C. Harris

Federal Circuit 2007-1232, March 6, 2009

be considered an inven- tor. Applying these concepts, the Federal Circuit held that Benson was not an inventor because the fea- tures of the dependent claims were known in the related art, and thus, Ben- son’s contribution was

• nly an exercise of a per-

son with ordinary skill in the art. The Federal Cir- cuit further stated that Benson’s contributions were insignificant when measured against the full dimension of the inven- tion. In this case, the Federal Circuit explains the re- quirements of inventor- ship through the use of an infringement dispute. Nartron argued that the District Court erred in granting summary in judgment in favor of Schukra because Benson, an employee of Schukra, was not named as a co- inventor of a dependent claim in the patent at is-

• sue. All the inventors

listed on the patent were employees of Nartron, and all admitted that none invented the features of the dependent claim. Benson claims to have provided Nartron with the idea covering the subject matter of the dependent claim. The Federal Circuit ex- plains that inventorship requires a contribution in a significant manner to the conception or reduction to practice of the invention. The contribution must be more than insignificant when measured against the dimension of the full

• invention. Therefore, one

who simply provides the inventor with well-known principles or explains the state of the art is not con- sidered an inventor. In

• rder to be considered an

inventor, the potential co- inventor must suggest a non-obvious combination

• f prior art elements.

Merely suggesting an ob- vious combination of the invention and prior art elements is not enough to and method claims di- rected to a marketing company, Ferguson, Cos- ton, and Harris appealed from a Board of Patent Ap- peals decision sustaining the rejection of all 68 claims, where the Board held that none of the claims were directed to patent-eligible subject The Federal Circuit con- tinues to reaffirm the Bilski decision by applying the machine or transformation test as the singular test for a process claim under §101. In Re Ferguson pre- sents an interesting exam- ple of unusual patent

• claims. In the late 90s,

during the dot-com boom, the USPTO was inundated with patents from every corner of industry, espe- cially the IT sector. With everyone trying to drum up business, the parties in the present case decided to try their hand at getting some “novel” patents. Still fighting to this day for their “paradigm claims”

Inside this issue:

Nartron Corp., v. Schukra

1

In Re Lewis Ferguson, Darryl Costin and Scott Harris

1 - 2

ICU Medical v. Alaris Medical Systems, Inc.

2 - 3

Crown Packaging Tech., Inc. v. Rexam Beverage Can Co.

3 - 4

Bishop v. Flourney

4

Article placements and An- nouncements

5

The Sughrue Review

May 1, 2009 Volume 1, Issue 4

matter under 35 USC §101. In light of Bilski, The Court affirmed the Board’s deci- sion. Claims 1-23 and 36-68 are method claims and claims 24-35 are paradigm

• claims. The method

ICU Medical v. Alaris Medical Systems, Inc.

Federal Circuit No. 2008-1077, March 13, 2009

The Federal Circuit held that the written description is crucial in con- struing claim terms and is relied on heavily as a guidance as to the meaning of the claims. This case relates to claim construction of the term “spike” in the context of medi- cal valves. ICU Medical originally attempted to obtain a judgment against Alaris medical, for infringing

• n their patents. However, the Dis-

medical valves used in the transmis- sion of fluids to or from a medical patient, i.e., when using an IV. This summary addresses the summary judgment of non-infringement and invalidity based on a lack of written description. Summary Judgment of Noninfringe- ment of “spike Claims” of ICU Patent trict Court construed the term spike unfavorably to ICU, specifically rely- ing on the specification. ICU Medi- cal appealed from the District Court decision granting partial summary judgment of non-infringement, inva- lidity, attorney fees and Rule 11 sanctions, all in favor of Alaris Medi-

• cal. The Federal Circuit affirmed the

District Court’s decision. The tech- nology in this matter concerned

In Re Lewis Ferguson, Darryl Costin and Scott C. Harris (cont.)

Page 2

The Federal Circuit also rejected Applicant’s paradigm claims be- cause they did not fit into any of the four statutory subject matter catego-

• ries. Applicant argued that a com-

pany is a physical thing, so it is analogous to a machine. The Fed- eral Circuit disagreed, and the ap- plicant admitted that “you cannot touch the company.” The Federal Circuit decided in the end that the idea was too “paradigmatic” and abstract, thus not patentable. Judge Newman - Concurring Opin- ion. Judge Newman concurred with the decision, but took issue with the Dicta and overreaching of the opin-

• ion. Judge Newman believed that

the opinion defined abstract ideas too broadly as anything that does not meet the Bilski machine or trans- formation test, and this would impact future technological advancements. Judge Newman only concurred with the opinion because she agreed with the Examiner’s position that the marketing method was obvious un- der §103. claims were generally drawn to a method of marketing a product com- prising, developing a shared mar- keting force, using the shared mar- keting force to market different products, obtaining a share of total profits from each company, and ob- taining exclusive rights to market each product in return for using a shared market force. The paradigm claims were directed to a paradigm for marketing software comprising a marketing company that markets software. Judge Gajarsa writing for the Court The issue was whether the claims were drawn to patent-eligible sub- ject matter under §101. The Federal Circuit applied Bilski, stating that the Supreme Court’s machine or trans- formation test is the definitive test to determine whether a process claim is narrowly tailored enough to only encompass a particular application

• f a fundamental principle rather

than to pre-empt the principle itself. Specifically, the method claims 1-23, and 36-68 were not tied to a machine

• r apparatus. The Applicant argued

that the claims were tied to the use

• f a “shared marketing force.” How-

ever, this was not a machine or ap-

• paratus. In In re Nuijten, the Federal

Circuit held that a machine “is a concrete thing, consisting of parts,

• r of certain devices and combina-

tion of devices.” The Federal Circuit also reaffirmed the Bilski principle that transformation or manipulations

• f public or private legal obligations
• r relationships do not suffice as

transformation of article into a differ- ent state or thing. Nor do legal obli- gations/relationships etc represent physical objects or substances. The Federal Circuit also rejected the viability of the “useful, concrete, and tangible result” test from State Street Bank, because it inappropriately focuses on the result of the claimed invention rather than the invention

• itself. Applicant’s also asked the

court to consider a new test: whether the claimed subject matter requires that the product or process has more than a scintilla of interaction with the real world in a specific way.” The Federal Circuit declined to adopt this test because it would lead to ambiguity and conflict with Bilski, reaffirming the machine or transfor- mation test as the singular test for a process claim under §101.

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The marking statute, 35 U.S.C. § 287, requires that patentees of any pat- ented article give notice to the pub- lic that the product is patented. Sec- tion 287 can be satisfied by fixing the word “patent” or the abbrevia- tion “pat.” with the patent number The Federal Circuit reaffirms that when asserting only method claims

• f a patent, the marking require-

ments of 35 U.S.C. § 287 do not ap- ply. Rexam argued that the dismissal of their infringement counterclaim was improper because their failure to mark products covered by the as- serted patent did not implicate 35 U.S.C. § 287 because the asserted claims were directed to method claims and not the apparatus claims.

Crown Packaging Tech., Inc. v. Rexam Beverage Can Co.,

Federal Circuit 2008-1284, -1340, March 17, 2009

valid due to a lack of written de-

• scription. The Federal Circuit af-

firmed this District Court’s decision. Alaris argued that the specifications

• f the ICU patents were limited to

valves with a spike, and that the specifications did not demonstrate that the inventor possessed a medi- cal valve without a spike. Specifi- cally, the spikeless claim, claim 35,

• f 592 patent, was not filed with the
• riginal application, but added later

during prosecution. ICU responded to this by arguing that these claims are spike-optional, i.e., that since these claims contained no spike limitations they cover valves with and without a spike. The Federal Circuit affirmed the summary judgment of invalidity, stating that these claims do not re- quire a spike and refer to medical valves generically, but the specifica- tion only refers to medical valves with a spike. ICU further contends that one of ordinary skill in the art would understand that the specifica- tion discloses a pre-slit seal, such that no spike would be required. However, the Federal Circuit held that it was not sufficient to show that a spikeless valve was intended, be- cause the written description re- quirement is complied with by de- scribing the invention with all its limitations, not that which makes it

• bvious.

ICU’s challenge to the District Court’s decision is premised on the construction of the term “spike.” The Federal Circuit stated that claim terms should be given their ordinary and customary meaning and that such meaning is one that “the term would have to a person of ordinary skill in the art in question at the time

• f the invention,” Phillips v. AWH

Corp, 415 F.3d 1303, 1312-13 (Fed.

• Cir. 2005). Further, the Federal Cir-

cuit stated that the written descrip- tion is crucial in construing claim terms and is relied on heavily as a guidance as to the meaning of the

• claims. The District Court construed

spike to mean “an elongated struc- ture having a pointed tip for pierc- ing the seal, which tip may be sharp

• r slightly rounded.” ICU argued

that the term spike should be con- strued as “an upward projection.” The specification states throughout that the two-way valve includes a seal which is pierced to open the valve and reseals upon being de-

• compressed. The Federal Circuit

acknowledged that it should not im- port limitations into the claims from the specification, but instead stated that this helped focus on the under- standing one of ordinary skill would have of the term. Further, all of the Figures show the spike as elongated and pointed, and piercing the seal. ICU argued that the term spike can- not be construed as pointed, since the specification states that it is a spike with a hole at the tip, and as such cannot be pointed. The Fed- eral Circuit rejected this reasoning since a needle is an example of a pointed spike with a hole at the tip. ICU also argues that the Federal Cir- cuit should not import functional limitations of piercing because it is not recited in the claim. However the Federal Circuit stated that the functional language of “for piercing a seal” is appropriate because it de- fines the degree to which the spike must be pointed. ICU lastly argued that, according to claim differentiation, claim 13 pre- cluded a construction of the term spike as a pointed tip for piercing the seal, because it states that “wherein said end of spike is pointed ...” The Federal Circuit re- jected this argument as well be- cause claim 13 was added years af- ter the filing date of the original pat-

• ents. Further, the Federal Circuit

stated that claim differentiation is a guide, not a rigid rule of claim con- struction. Lack of Written Description The District Court granted summary judgment in favor of Alaris holding that the asserted spikeless tubes and tube claims of the patents were in-

ICU Medical v. Alaris Medical Systems, Inc. (cont.)

Page 3

Volume 1, Issue 4

The Sughrue Review

Page 4

ing the time for taking testimony.” The Board found that even though Flournoy had not filed a response to Bishop’s trial briefs, Bishop had failed to prove his opposition by a preponderance of evidence. The Board did not mention Flournoy’s

• admission. Bishop appealed the de-

cision. On appeal, Bishop argued that Flournoy’s admissions prove that Bishop has standing. Under T.B.M.P. § 704.06(a), “statements in plead- ings may have evidentiary value as admissions against interest by the party that made them.” Flournoy had admitted that she had knowl- edge that Bishop had been using both of the marks on his original art-

• work. She had also admitted that the

category in which she filed for these trademarks includes original art-

• work. While the Federal Circuit

agreed with the Board on the issue

• f untimely submission of evidence,

it found that the admissions may have been sufficient to establish standing and fraud or likelihood of confusion, and remanded for the Board to address in the first instance whether said admissions satisfied Bishop’s burden of proof. In Bishop v. Flournoy, the Federal Circuit considered whether Bishop had submitted admissible evidence to establish his standing and his as- serted grounds for opposition based

• n a likelihood of confusion and

fraud; and remanded the case to the Trademark Trial & Appeal Board (“Board”) with instructions to recon- sider the issues. The Board dismissed Opposer Bishop’s opposition to the registra- tion of two trademark applications filed by Flournoy for the marks “100% ART” and “ONEHUNDREDPERCENT ART” for failure to timely submit admissible evidence which would establish his standing and a ground for refusal of

• registration. See Bishop v. Flournoy,

Opposition Nos. 91/175,625 and 91/175,737 (T.T.A.B. Sept. 5, 2008). Bishop had opposed the applica- tions, attaching evidence in support

• f his case, in which he alleged (1)

standing; (2) priority and a likeli- hood of confusion with his previ-

• usly used mark; and (3) that Flour-

noy had committed fraud in apply- ing for and prosecuting her applica-

• tion. In her response, Flournoy as-

serted that Bishop had not estab- lished any right to relief, but did ad- mit that she had knowledge that Bishop had previously been using both marks on his artwork. Bishop did not file any testimony or notices of reliance during the thirty- day testimony period. He subse- quently filed trial briefs, attaching evidence in support of his case. Bishop then filed briefs, arguing that he was entitled to judgment because Flournoy had failed to file any trial briefs. The Board did not consider any of the evidence Bishop had attached to the Notices of Opposition, because under 37 CFR § 2.122(c), “an exhibit attached to a pleading is not evi- dence on behalf of the party to whose pleading the exhibit is at- tached unless identified and intro- duced in evidence as an exhibit dur- ing the period for the taking of testi- mony.” See Trademark Trial and Appeal Board Manual of Procedure § 714.05(a) (“T.B.M.P.”). With respect to the exhibits attached to Bishop’s trial briefs, the Board did not con- sider them because under T.B.M.P § 704.05(b), “[e]xhibits and other evi- dentiary materials attached to a party’s brief on the case can be given no consideration unless they were properly made of record dur-

Bishop v. Flournoy

Federal Circuit 09-1084, April 1, 2009

The Sughrue Review

Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., (cont.)

which also includes apparatus claims, marking is not required for the product invoking the method claims.

• n to the product. Failure to satisfy §

287 results in the surrender of dam- ages until the infringer is notified of the infringing act. Upon notification the patentee can only obtain dam- ages for infringement continued af- ter notice is provided to the in- fringer. However, relying on Hanson (718 F.2d 1075 (Fed. Cir. 1983)), the Fed- eral Circuit held that the dismissal of Rexam’s counterclaim was inappro- priate because only method claims were asserted against Crown. Han- son holds that when a patentee as- serts only method claims of a patent,

The Sughrue Review

Volume 1, Issue 4

Page 5

Brian W. Hannon - Editor Carl J. Pellegrini - Editor Shar Poormosleh - Assistant Editor Tiffany Nichols - Assistant Editor Sejal Rathod - Assistant Editor

M o u n t a i n V i e w , C A ♦ S a n D i e g o , C A ♦ T o k y o , J a p a n ♦ W a s h i n g t o n , D C

Phone: (202) 293-7060 E-mail: newsletter@sughrue.com Web address: www.sughrue.com Contributors to this edition: Shar Poormosleh, Ayan Afridi & Ebenesar Thomas

Tiffany Nichols and Sejal Rathod, “Does Reverse Pay- ment Stifle the Innovation that the Patent Act Seeks to Promote”, BioWorld Perspectives, April 9, 2009 Stuart Lee and Ayan Afridi, “High Time for More Definite Claims”, IPLaw 360, April 16, 2009 Natalya Dvorson, “Stay Alert on Road to Lower Patent Costs”, Legal Times, April 20, 2009

PATENT REFORM 2009 - A FULL OVERVIEW

RECENTLY PUBLISHED ARTICLES

Announcements

CINDY WEBER AND MACK WEBNER RECOGNIZED AMONG BEST IN THEIR FIELD Sughrue Mion has been advised that Cindy Weber and Mack Webner are named in the Euro-Money Institutional Investor PLLC’s Legal Media Group “2009 BEST OF THE BEST” trademark lawyers. The bi-annual survey is designed to find the 25 “Best of the Best” trademark lawyers throughout the world. Cindy and Mack’s representation makes Sughrue Mion the only U.S. law firm to have two of its members represented on the top 25 list. This is the fourth straight time Mack has been selected and the second straight time for Cindy who is also the Sughrue firm’s Managing Partner. The survey is conducted among 60,000 international lawyers to select the Best of the Best in eleven practice areas. We at Sughrue are pleased that our attorneys are recognized for their

• capabilities. We hope our clients are equally as pleased to have these

two Best of the Best lawyers representing their trademark interests. SUGHRUE PARTNER JOHN CALLAHAN OB- TAINS IMPORTANT VICTORY ON BEHALF OF MAJOR HEALTH CARE CLIENT In an important victory for firm client Abbott Laboratories, Sughrue obtained a favorable de- cision in an interference matter against Boston

• Scientific. The subject matter of the interference

related to medical devices, specifically, embolic filters used with angioplasty procedures that include stents. Sughrue’s interference team included John Cal- lahan, Mike Raucci and Travis Ribar.