Sughr ue Revi ew Sughr ue Revi ew Volume 1, Issue 7 August 5, 2009 - - PDF document

ings of the other reference because one of ordinary skill in the art, upon reading the first reference, would be dis- couraged from following the path set out in the other ref-

• erence. Accordingly, the

hypothetical claim was not

• bvious in view of the two

references and Medtronic’s ensnarement defense was denied. “Pull- through” products – products the patent owner could have sold with the de- vice covered by the patent, but did not sell because the infringing device was sold instead – must be related to the patented invention in

• rder to be included in the

lost profit award. The jury awarded DePuy $77.2 million for profits that DePuy al- leged it would have made from selling “pull- through” products Medtronic argued that the purported “pull- through” products had no functional relationship with the patented pedicle screws and could be used inde- pendently of the patented pedicle screws. The Federal Circuit reversed the jury award because the products could not be considered to be components of a single assembly or parts of a com- plete machine, nor did they together constitute a func- tional unit. The court stated that there exists no basis for extending a lost profit award to include damages for un- patented items that are nei- This appeal ends a long line

• f

appeals between DePuy and Medtronic. In a prior appeal, the Federal Cir- cuit held that Medtronic did not literally infringe, but re- manded for determination of infringement under the doc- trine of equivalents. In this appeal based on the scope of eq u i val en cy, Med t r o n i c raised the defenses of en- snarement and a defense against lost profits. The ensnarement de- fense can be used when there has been a finding of no literal infringement but when there is a question of infringement under the doc- trine of equivalents. En- snarement bars a patentee from asserting a scope of equivalency that would en- compass, or “ensnare,” the prior art. Medtronic raised an ensnarement defense and argued that DePuy’s asserted scope of equivalency would “ensnare” the prior art. The Federal Circuit held that en- snarement, like prosecution history estoppel, is a legal limitation on the doctrine of equivalents to be decided by the court, not a jury. The Federal Circuit ex- plained that a helpful first step in an ensnarement de- fense analysis is to construct a hypothetical claim that literally covers the accused device (Medtronic’s pedicle screw). This hypothetical claim is based largely on the claims alleged to be in- fringed, but substitutes an equivalent structure that the patentee (DePuy) asserts is within the scope of the pat- ented claims. In this case, D ePu y asser t ed t h at “conically- shaped” pedicle screws were equivalent to (or within the scope of) the claimed “spherically- shaped” pedicle screws. So for the hypothetical claim in this case, the phrase “conically- shaped” was substituted for “spherically- shaped.” Once both parties agree that the hypothetical claim covers the accused device, the district court must assess the prior art introduced by the ac- cused infringer (Medtronic) and determine whether the patentee (DePuy) has carried its burden of persuading the court that the hypothetical claim is patentable over the prior art. If this hypothetical claim would be unpatentable under 35 U.S.C. §§ 102 or 103, then the patentee has

• verreached, and the ac-

cused device is noninfringing as a matter of law. In this case, Medtronic argued that the hypothetical claim was obvious in view of two references that Med- tronic submitted, and that DePuy therefore overreached in its doctrine of equivalence

• assertion. The Federal Cir-

cuit agreed with the district court’s conclusion that one

• f

Medtronic’s references taught away from the teach-

A Lesson on the Ensnarement Defense, Defending Against Lost Profits, and Willful Infringement

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,

Federal Circuit 2008-1240, June 1, 2009 Tom Andersen

Sughrue Mion, PLLC

Sughr ue Revi ew Sughr ue Revi ew

Inside this issue:

Depuy Spine, Inc.

• v. Medtronic Sofa-

mor Danek, Inc. 1-2 Titan Tire Corp. v. Case New Eng- land, Inc. 2-3 Agilent Technolo- gies, Inc. v. Affy- metrix, Inc. 3-4 Ecolab, Inc. v. FMC Corporation 5-6 University of Pittsburgh v. Var- ian Medical Sys- tems, Inc.

4-5

Recent Articles published

6

August 5, 2009 Volume 1, Issue 7

ther competitive with, nor function with the patented invention. Willful infringement requires an

• bjective inquiry. Under In re Sea-

gate Technology, LLC, to establish willful infringement, a patentee must show by clear and convincing evi- dence that (i) the infringer acted de- spite an objectively high likelihood that its actions constituted infringe- ment of a valid patent, and (ii) that this objectively- defined risk was ei- ther known or so obvious that it should have been known to the ac- cused infringer. 497 F.3d 1360 (Fed.

• Cir. 2007).

The Federal Circuit reaffirmed that Seagate’s first prong is an ob- jective inquiry and thus, the state of mind of the accused infringer is not

• relevant. Further, evidence of copy-

ing is of no importance on the ques- tion of whether the claims of an is- sued patent are infringed, either lit- erally or by equivalents. Evidence of copying in a case of direct infringe- ment is only relevant to Seagate’s second prong because such evidence may show that the accused infringer knew or should have known about the likelihood of its infringement. In this case, because the Federal Circuit had held in a prior appeal that Medtronic did not literally in- fringe the patent and remanded for a determination of infringement under the doctrine of equivalents, the question of infringement was a close

• ne. Thus, an objectively high likeli-

hood of infringement would not have been found under Seagate’s first prong, and Medtronic was held not to have willfully infringed. In summary, the ensnarement defense may be used when there is a question of infringement under the doctrine of equivalents. When using this step, the court will construct a hypothetical claim that literally cov- ers the accused device and then de- termine whether this hypothetical claim is patentable over the prior art. With regard to lost profits, “pull- through” products are products the patent owner could have sold with the device covered by the patent, but did not sell because the infringing device was sold instead. These “pull- through” products must be related to the patented invention in

• rder to be included in the lost profit
• award. And lastly, the accused in-

fringer’s state of mind is not relevant when determining whether there was an objectively high likelihood of in- fringement under Seagate’s first prong. which alleged that the sale of back- hoes with tires infringed the ‘862

• patent. Following the filing of the

infringement suit Goodyear and Ti- tan filed a motion for a preliminary injunction to prohibit Case from sell- ing any backhoes containing the in- fringing tires. The district court de- nied Titan’s motion for preliminary injunction, holding that Titan was not likely to withstand Case’s chal- lenge to the validity of the ‘862 pat- ent on obviousness grounds despite the fact that the other three prelimi- nary injunction factors- - irreparable harm, balance of the hardship and public interest- - weighed in favor of granting an injunction. Titan ap- pealed from the district court’s de- nial of a preliminary injunction, the The failure of a plaintiff to es- tablish a likelihood of success on validity grounds, can defeat a motion for a preliminary injunction. The Federal Circuit made this clear in its recent decision in an appeal before J udges Newman, Plager, and Gajarsa. In this case, the Federal Circuit af- firmed the district court’s denial of Titan Tire Corporation’s request for a preliminary injunction against Case New England, Inc. (“Case”). In Titan, the asserted design patent, U.S. Design Patent No. 360, 862 (‘862 patent), is directed to a tractor tire. Goodyear is the owner

• f the ‘862 patent and Titan Tire

Corporation (“Titan”) is the licensee. Goodyear and Titan filed a suit against Case New England (“Case”), issue being whether Case raised “a substantial question of invalidity.” On appeal, the Federal Circuit clarified the requirements for an in- junction, as reiterated by the Su- preme Court. Specifically stating that plaintiffs seeking an injunction must establish that (1) they are likely to succeed on the merits; (2) they are likely to suffer an irrepara- ble harm if the preliminary injunction is not granted; (3) the balance of equities is in their favor; and (4) an injunction is in the public interest. Winter v. Natural Res. Def. Council, Inc., 129 S. Ct. 365, 374 (2008). The Federal Circuit affirmed the denial of the preliminary injunction, and in so doing, clarified the evidentiary bur- dens in the context of a preliminary

Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., Federal Circuit 2008-1240 (cont.)

The Failure of a Plaintiff to Establish a Likelihood of Success on the Merits Defeats a Motion for a Preliminary Injunction

Titan Tire Corp. v. Case New England, Inc.,

Federal Circuit, 2008-1078, June 3, 2009 Marina Zalevsky

Page 2 Sughrue Review

• injunction. The court held that if the

alleged infringer responds to the preliminary injunction motion by attacking the validity of the patent, the patentee must show that the al- leged infringer’s defense lacks sub- stantial merit. New England Braiding

• Co. v. A.W. Chesterton Co., 970 F.2d

878, 883 (Fed. Cir. 1992). The court further explained that if the alleged infringer presents an invalidity de- fense, and the patentee does not show lack of sub- stantial merit of the invalidity defense, the patentee has not succeeded in show- ing likelihood of suc- cess on the issue of

• validity. Id., 970 F.2d

at 883. In conclusion, the patentee, or the movant, must persuade the court that they will still prevail on the issue of validity if the alleged infringer presents an invalid- ity defense. The district court’s decision to deny the preliminary injunction turned on the issue of obviousness. Design patents are subject to the nonobviousness requirement of 35 U.S.C. § 103. In making this deci- sion, the district court relied on Durling v. Spectrum Furniture Co. in rendering its judgment. 101 F.3d 100 (Fed. Cir. 1996) In Durling, the Federal Circuit held that the inquiry for obviousness

• f a design patent under 35 U.S.C. §

103 is whether the claimed design would have been obvious to a de- signer of ordinary skill who designs articles of the type involved. Id., at 103 (In re Rosen, 673 F.2d 388, 390- 91 (CCPA 1982)). One must find a single primary reference, in which the design characteristics are sub- stantially the same as the claimed

• design. Only then can a secondary

reference be used to modify the pri- mary reference to create a design that has the same overall visual ap- pearance as the claimed design. Id. The district court considered few designs, which “create basically the same visual impression” as the design in the ‘862 patent of “a tire tread with lugs that have two bent rib portions and an enlarged head which extends over the centerline of the tire.” In response, Titan argued that no presented design had the hexagonal lug heads, which is the main feature of the patented design. However, the Federal Circuit opined that the BF Goodrich tire has the enlarged, six- sided lug heads, and, therefore, might be used to modify

• ne of the primary references to cre-

ate a design with the same overall visual appearance as the design in the ‘892 patent. In upholding the district court, the Federal Circuit reiterated that the “point of novelty” test of Egyp- tian Goddess, Inc. v. Swisa is abrogated and that the test of the “ordinary observer” is the controlling test for design patent infringement. By elimi- nating the “point of novelty” test, the focus is on a com- parison of the designs as whole from the perspective of the

• rdinary observer. Egyptian Goddess,

543 F. 3d, 665, 676- 78 (Fed. Cir. 2008). However, the Federal Circuit held that the district court correctly looked into the law as held in Durling in rendering its judgment and did not abuse its discretion in denying the motion for preliminary injunction.

Titan Tire Corp. v. Case New England, Inc., Federal Circuit 2008-1078 (cont.)

Page 3 Volume 1, Issue 7

support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language.” Agilent was the junior party in the interference and the claims at issue

• r ig i nat ed

in Ag ilent ’ s “Schembri” patent. Affymetrix, the It is well settled that when a party challenges a claim’s validity under § 102 or § 103, the claim must be interpreted in light of the specification in which it appears. But in an interference, which specifica- tion must provide written description support for the claim or count? The Federal Circuit holds that “when a party challenges written description senior party, copied the Schembri claims into its “Besemer” application, to provoke an interference. Agilent, as the junior party, had the burden to show prior entitlement to its patented technology. Agilent challenged the validity of the copied claims on the grounds that the Bese- mer application did not describe the

Which Specification Provides Support for Disputed Language in an Interference Count?

Agilent Technologies, Inc. v. Affymetrix, Inc.

Federal Circuit 2008-1466, June 4, 2009 Hui Wauters “the patentee, or the movant, must persuade the court

that they will still prevail on the issue of validity if the alleged infringer presents an invalidity defense . “

invention adequately to show actual possession of the invention under § 112, first paragraph. The disputed claims pertain to “microarray hybridization,” and fo- cuses primarily upon a method of mixing a fluid for thorough contact with the microarray surface in a closed chamber using a bubble. The district court construed the term “a closed chamber … adapted to retain a quantity of fluid” to mean “an enclosed cavity, or some other enclosure or system of enclosures, which is capable of being sealed or set apart from its surroundings to retain a quantity of fluid.” SJ Order, slip op. at 12. The district court ar- rived at this construction by refer- ring to Figure 28 of the Besemer ap- plication. However, since the claims at issue originated in the Schembri pat- ent, the Federal Circuit construed the claims based on the Schembri dis-

• closure. The Schembri specification

consistently uses the term “closed chamber” to refer simply to the space between a first and second parallel substrate. The Schembri specification provides no indication that a closed chamber is a “system of enclosures; rather, it describes a closed chamber as an enclosure.” Accordingly, the Federal Circuit found that the Besemer application lacked adequate written description to support the count (the interfering claims) and, thus, the district court erred in construing claim language in light of the host Besemer applica- tion, rather than the originating Schembri disclosure. Pitt later sued Varian Medical Systems, Inc. (“Varian”) for infringe- ment of the patents at issue in dis- trict court, but failed to include Car- negie Mellon as a plaintiff. Varian moved for summary judgment to dismiss the case based on its asser- tion that Pitt lacked standing to bring the action at issue because of failure to name Carnegie Mellon as a

• plaintiff. In particular, Varian alleged

that because Carnegie Mellon was a co- owner of the patents at issue, Pitt did not own the entire right in the patents, and therefore lacked stand- ing to sue Varian for patent infringe-

• ment. Pitt moved to join Carnegie

Mellon as plaintiff pursuant to Fed- eral Rule of Civil Procedure 19, which allows for joining parties to a suit, but without explanation, the district court denied Pitt’s motion. In re- sponse to Pitt’s motion, Varian al- leged that it was too late for Pitt to add Carnegie Mellon and urged the district court to dismiss the action with prejudice. Dismissal with prejudice by a court operates as a bar to future action by preventing plaintiff from making further at- tempts at a claim based upon the The Federal Circuit gave the University of Pittsburgh (“Pitt”) a sec-

• nd chance at its patent infringe-

ment suit against Varian Medical Systems, Inc. (“Varian”). Because Pitt failed to name as a plaintiff a co-

• wner of a patent it asserted against

Varian, the district court dismissed the suit with prejudice because of the deficient complaint. However, the Federal Circuit held that a dis- missal for lack of standing due to failure to join a co- owner of a patent in an infringement suit should be made without prejudice, in this case, allowing Pitt to properly establish standing by joining all co- owners of the asserted patent. Scientists at the University of Pittsburgh (“Pitt”) and Carnegie Mel- lon University (“Carnegie Mellon”) collaborated to develop an improved apparatus for administering radia- tion therapy to lung cancer patients. Pitt filed for, and was later granted, two patents covering those inven- tions, where Pitt and Carnegie Mellon were named as assignees for both patents. same facts. The district court dis- missed the action with prejudice on the grounds that Carnegie Mellon should have been joined when the action was commenced, and that joinder at this point in the litigation would be untimely and unfair to Var- ian. In holding that the district court’s ruling was a clear abuse of discretion, the Federal Circuit fo- cused on the following four factors, while not exclusive, to determine when dismissal is appropriate: 1) the degree of the plaintiff’s personal responsibility for the delay, 2) preju- dice to the defendant occasioned by the delay, 3) any history that the plaintiff proceeded in a dilatory manner and 4) the effectiveness of sanctions other than dismissal. In reviewing the district court’s deci- sion, the Federal Circuit found that, “[t]he district court’s opinion simply fails to discuss any of the relevant factors.” The district court’s only expla- nation for dismissing the suit with prejudice was that 1) Pitt should

Agilent Technologies, Inc. v. Affymetrix, Inc., Federal Circuit 2008-1466 (cont.)

Is Failure to Join Patent Co-owner Fatal in an Infringement Suit?

University of Pittsburgh v. Varian Medical Systems, Inc.

Federal Circuit 2008-1441, -1454, June 9, 2009 Branka Bogunovic

Page 4 Sughrue Review

Circuit states, “The district court should have dismissed the action without prejudice, which would allow Pitt to file a second action with the standing defect cured through the joinder of the proper parties or an assignment of the necessary patent rights.” With respect to the district court’s second reason for dismissing the action with prejudice, the Federal Circuit states that the district court cited no authority indicating why dismissal with prejudice is a proper consequence for an “untimely and unfair” attempt to join a party. The determination of whether the dis- missal with prejudice is appropriate for actions, such as an “untimely and unfair” attempt to join a party, is a procedural issue not unique to pat- have joined the co- owner, Carnegie Mellon, of the patents at issue, at the commencement of its infringement action and 2) Pitt’s attempt to join Carnegie Mellon was “untimely and unfair” to the defendant Varian. With respect to the district court’s first reason for dismissing the action with prejudice, the Federal Circuit stated that it is clear that a dismissal for failure to join a party is not an adjudication on the merits, and thus the dismissal should have been without prejudice. Accordingly, the Federal Circuit stated that al- though the district court had discre- tion to dismiss the action, because Pitt failed to join a co- owner of the patents in suit, the district court lacked discretion to do so with

• prejudice. In particular, the Federal

ent law, and thus, the Federal Circuit applied the law of the regional cir-

• cuit. As held in Donnelly v. J
• hns-

Manville Sales Corp., “dismissal [with prejudice] is a drastic sanction and should be reserved for those cases where there is a clear record of delay

• r contumacious conduct by the

plaintiff.” 677 F.2d 339, 342 (3d Cir. 1982). In summary, the Federal Circuit held that the district court’s dis- missal of Pitt’s infringement action with prejudice was an abuse of dis-

• cretion. Accordingly, the Federal

Circuit reversed and designated the dismissal to be without prejudice allowing Pitt to establish standing by joining Carnegie Mellon in the in- fringement suit.

A Single Statement Made in Prosecution is Not Enough to Invoke Prosecution History Disclaimer When Prosecution is Viewed as a Whole

Ecolab, Inc. v. FMC Corporation

Federal Circuit, 2008-1128, -1252, June 9, 2009 Eric Barr

University of Pittsburgh v. Varian Medical Systems, Inc., Federal Circuit 2008-1441, -1454 (cont.)

To what extent are statements made during prosecution, which al- ter the meaning of a claim, enough to invoke the doctrine of prosecution history disclaimer? The Federal Cir- cuit, in Ecolab, Inc. v. FMC Corpora- tion, recently took a step in answer- ing this question. Prosecution history disclaimer

• ccurs when an Applicant, or agent
• f the Applicant, makes disclaiming

statements with reference to claim language during the prosecution of a patent application. The Federal Cir- cuit found that in this case, a single statement made during prosecution was not enough to invoke prosecu- tion history disclaimer. Ecolab appealed and FMC cross- appealed from the district court’s final judgment based on three issues. The first issue con- cerned the jury’s verdict that Ecolab infringed certain claims of FMC’s U.S. Patent No. 5,632,676 (“the ‘676 pat- ent”). The second issue concerned FMC’s willful infringement of certain claims of Ecolab’s U.S. Patent Nos. 6,010,729 (“the ‘729 patent”) and 6,113,963 (“the ‘963 patent”). The third issue concerned the invalidity

• f certain claims of the Ecolab pat-
• ents. The patents at issue are di-

rected to the use of peracetic acid (“PAA”), an antimicrobial agent, as a sanitizer in beef and poultry proc- essing. Ecolab asserted that the district court should have granted judgment as a matter of law (“J MOL”) that Eco- lab did not infringe the ‘676 patent claims, and that FMC induced in- fringement of Ecolab’s patent claims. On the other hand, FMC asserted that the district court should have: i) granted J MOL that certain claims of the ‘729 patent and the ‘963 patent are invalid as anticipated or obvious in light of the prior art, ii) Ecolab induced infringement of FMC’s pat- ent claims, and iii) FMC did not will- fully infringe Ecolab’s patent claims. The Federal Circuit affirmed the district court’s denial of Ecolab’s motion for J MOL of noninfringement

• f the ‘676 patent claims based on

the following. During prosecution, FMC made statements indicating that PAA is the sole antimicrobial agent in the sanitizing solution, to distin- guish over prior art cited by the pat- ent examiner. Ecolab asserted that these statements made by FMC al- tered the meaning of the claim lan- guage, “consisting essentially

• f

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In this case, Ecolab also as- serted that its product cannot in- fringe the ‘676 patent claims be- cause the ‘676 patent explicitly states that the claim term, “sanitize,” “denote[s] a bacterial population re- duction to a level that is safe for hu- man handling and consumption,” yet its product does not and cannot make raw poultry safe for human consumption because cooking is

• required. The Federal Circuit held

that, while an inventor may act as his

• wn lexicographer (defining claim

terms in the specification regardless

• f common or technical meaning)

and that courts must construe claims as written, the definition of “sanitize” is ambiguous in that it does not in- dicate when consumption is to take

• place. Based on expert testimony,

the Federal Circuit determined that consumption occurs after cooking. The Federal Circuit reversed the district court’s denial of FMC’s mo- tion for J MOL that certain claims of the ‘729 patent and the ‘963 patent are invalid as anticipated or obvious. With respect to anticipation, the Fed- eral Circuit found that the jury’s ver- [PAA],” to exclude compositions that cont ain m ult iple ant im icrobial agents, including Ecolab’s composi- tion. The Federal Circuit held that FMC’s statements, when considered in the context of the prosecution history as a whole, are not clear and unmistakable enough to invoke the doctrine of prosecution history dis-

• claimer. The examiner had re-

sponded to FMC’s statements that PAA is the sole antimicrobial agent in the sanitizing solution by noting that the claim language, “consisting es- sentially of [PAA],” does not limit the claims to compositions containing PAA as the sole antimicrobial agent. Following the examiner’s clarifica- tion, FMC did not repeat the alleg- edly disclaiming statements, but in- stead, set forth alternative argu- ments for patentability. Because these statements, when considering the prosecution as a whole, tend to negate FMC’s earlier statement, the Federal Circuit declined to find that FMC had limited the claim by dis- claimer. dict was not supported by substan- tial evidence and pointed to FMC’s expert testimony, addressing each element of the ‘729 patent claim, showing how each element was dis- closed in a prior art publication. As a result, the Federal Circuit further dismissed Ecolab’s arguments of undue experimentation based upon the extensive testing required to develop the Ecolab product. With respect to obviousness, the Federal Circuit held that the ad- dition of an “at least 50 psi” pressure limitation in the ‘963 patent claims would have been obvious because the advantages of spraying antim- icrobial solutions onto meat at high pressure were known, and thus there was an apparent reason to combine the known elements in the fashion

• claimed. Additionally, a person of
• rdinary skill would have known how

to make this combination. Accord- ingly, the Federal Circuit held that the claims are invalid as obvious be- cause the claims recite a combina- tion of familiar elements to yield predictable results.

Brian W. Hannon - Editor Carl J. Pellegrini - Editor Jay Lytle - Editor Dave Emery - Co 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

Contributors to this edition: Tom Andersen, Eric Barr, Branka Bogunovic, Hui C Wauters, Marina Zalevsky

Ecolab, Inc. v. FMC Corporation, Federal Circuit, 2008-1128, -1252 (cont.)

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