The Federal Circuit month at PATENTEE FAILS TO DISCLOSE THE COURT - PDF document

Last The Federal Circuit month at PATENTEE FAILS TO DISCLOSE THE COURT “SM ILES BRIGHTLY” ON TREES FOR THE FOREST DEFENDANTS ACCUSED OF INFRING- “ One cannot disclose a forest in the ING TEETH-BLEACHING PATENT original application, and then later pick Federal Circuit affirms claim construction a tree out of the forest and say ‘here is and summary judgment of noninfringe- my invention.’” Purdue Pharma L.P. v. ment. Dunhall Pharms., Inc. v. Discus Faulding, Inc. , No. 99-1416 (Fed. Cir. Dental, Inc. , No. 99-1446 (Fed. Cir. Oct. 26, 2000)(nonprecedential Oct. 25, 2000) . . . . . . . . . . . . . . . . . . . . 1 decision) . . . . . . . . . . . . . . . . . . . . . . . . 4 FEDERAL CIRCUIT “CLOSES THE LID” REFURBISHM ENT OF PATENTED ON CIGARETTE PACKET DESIGN ARTICLE IS PERM ISSIBLE REPAIR, NOT Claims unpatentable given obviousness of INFRINGING RECONSTRUCTION de minimus differences from prior art and Generally, purchaser of a patented article primarily functional design. In re Chung , cannot go beyond repairing the article to No. 00-1148 (Fed. Cir. Oct. 4, 2000) reconstruct it. In this case, specification of (nonprecedential decision) . . . . . . . . . . . 4 patent itself states that device can be refur- bished. Bottom Line Management, Inc. v. COURT “RELIEVES PRESSURE” ON Pan Man, Inc. , No. 99-1467 (Fed. Cir. PATENTEE AFTER CONSTRUING Oct. 4, 2000) . . . . . . . . . . . . . . . . . . . . . 1 “PRESSURE” LIM ITATION Summary judgment of noninfringement and invalidity of polyurethane foam patent Washington, DC LICENSED AUTHORIZATION OUTSIDE 202-408-4000 reversed given Court’s de novo claim con- THE UNITED STATES DOES NOT struction. Doyle v. Crain Indus., Inc. No. NEGATE APPLICABILITY OF 00-1103 (Fed. Cir. Oct. 25, 2000) 35 U.S.C. § 271(g) Palo Alto (nonprecedential decision) . . . . . . . . . . . 5 Section 271(g) applies to unauthorized 650-849-6600 actions within the United States. It is DISTRICT COURT IM PROPERLY irrelevant that the product was authorized NARROWED CLAIM S TO CHINESE to be produced outside the United States Atlanta CHARACTERS PATENT Court affirms judgment of infringement 404-653-6400 Summary judgment of noninfringement for patent covering amino acid threonine, vacated given district court’s erroneous rejecting several invalidity attacks. construction of term “ when.” Zi Corp. Ajinomoto Co. v. Archer-Daniels-Midland Tokyo of Can. Inc. v. Tegic Communications Inc. , 011-813-3431-6943 Co. , No. 99-1098 (Fed. Cir. No. 00-1032 (Fed. Cir. Oct. 24, 2000) Oct. 3, 2000) . . . . . . . . . . . . . . . . . . . . . 2 (nonprecedential decision) . . . . . . . . . . . 6 Brussels 011-322-646-0353 TOY PATENT NOT INFRINGED NONM ERITORIOUS DOES NOT M EAN Prosecution history estoppel prevents FRIVOLOUS patentee from encompassing the The doors of the appellant courthouse CATCH & STICK toy under the DOE . must remain open for losing appeals as Bai v. Toy Island Mfg. Co. , No. well as winning appeals. Sparks v. 00-1178 (Fed. Cir. Oct. 10, 2000) Eastman Kodak Co. , No. 00-1049 (nonprecedential decision) . . . . . . . . . . . 7 EDITED BY VINCE KOVALICK (Fed. Cir. Oct. 31, 2000) . . . . . . . . . . . . 3 This publication brings you a synopsis of patent cases decided last m onth by the United States Court of Appeals for the Federal Circuit based on slip opinions received from the court. You can review and dow nload the full text of each opinion by visiting our Web site ( www.finnegan.com ).

L A ST M O N T H AT T H E F E D E R A L C I R C U I T Patentee Fails to Disclose the Trees of overreaching the written description requirement was designed to guard against.” Id . for the Forest Finally, the Federal Circuit rejected Purdue’s contentions that the district court was bound by Gregory A. Chopskie the Examiner’s finding that the asserted claims were supported by the specification, particularly in light [J udges: Bryson (author), Plager, and Smith] of the fact that the district court had heard exten- sive evidence on the issue that was not before the In Purdue Pharma L.P. v. F aulding, Inc. , No. 99- E xaminer. Having affirmed the district court’s find- 1416 (Fed. Cir. Oct. 25, 2000), the Federal Circuit ings of invalidity, the Federal Circuit did not reach affirmed a district court’s holding of invalidity of the Faulding’s cross-appeal on infringement. asserted claims for failure to comply with the writ - ten description requirement. Purdue Pharma L.P. (“ Purdue” ) charged Refurbishment of Patented Article Faulding, Inc. (“ Faulding” ) with infringement of its Is Permissible Repair, Not Infringing U.S. Patent No. 5,672,360 (“ the ‘360 patent” ), which claims methods of treating pain in patients Reconstruction by administering an opioid, such as morphine, once a day. Specifically, independent claims for the Stephanie S. Conis once-a-day treatment of patients requires that the “ maximum plasma concentration (C max ) . . . is [J udges: Friedman (author), M ayer, and M ichel] 01 more than twice the plasma level of said opioid at page about 24 hours after administration of the dosage In Bottom Line Management, Inc. v. Pan Man, form [C24].” (This requirement is referred to as Inc. , No. 99-1467 (Fed. Cir. Oct. 4, 2000), the “ the C max /C24 ratio limitation” .) Federal Circuit affirmed a lower court’s SJ dismissing a complaint after finding the refurbishment of a After a bench trial, the district court found the patented article to be a permissible repair, not an asserted claims infringed but invalid because the infringing reconstruction. C max /C24 ratio limitation lacked support in the Bottom Line Management, Inc.’s (“ Bottom specification of the ‘360 patent. Purdue appealed Line” ) U.S. Patent No. 5,070,775 (“ the ‘775 the finding of invalidity and Faulding cross- patent” ) is directed to a cooking surface device for appealed the infringement finding. an upper movable heated platen of a two-sided On appeal, Purdue argued that the district cooking device and a method of producing it. In court had clearly erred in its factual findings. particular, the two-sided cooking device is used pri- Specifically, Purdue argued that the C max /C24 ratio marily to cook hamburgers in fast-food restaurants. limitation found support in a passage of the specifi- This device has a clam shell design, with a lower cation describing the invention as lacking a “ gener- half and a movable upper half (or lid) that are both ally flat” or “ substantially flat” morphine plasma cooking surfaces. Hamburgers are placed on the concentration curve. Rejecting the expert testimo- lower cooking surface and the lid is closed, placing ny and publications cited by Purdue, the Federal the upper cooking surface on top of the food. Circuit affirmed the district court’s finding that the Bottom Line manufactures a removable upper specification referring to a “ substantially flat serum cooking surface (“ platen” ) for these two-sided concentration curve” did not support the C max /C24 cookers. The platen is a flat rectangular aluminum ratio limitation. Similarly, the Federal Circuit reject - plate with a Teflon coating on the side that comes ed Purdue’s arguments that the examples in the into contact with the food. The other side of the specification provided support for the C max /C24 plate has a number of studs welded to it, which are ratio limitation, holding that while the relevant data used to attach or bolt the platen to the cooker’s were present, the specification did not emphasize upper half. The studs are welded to the back of the the required C max /C24 ratio. plate, which gives the side that touches the food a The Court explained that “ [w]hat the patentees smooth surface with no seams. This facilitates uni- [had] done [was] to pick a characteristic possessed form Teflon coating on the platen. However, the by two of their formulations, a characteristic that is Teflon coating eventually wears off with use. In not dismissed even in passing in the disclosure, and removing a worn platen, customers often bend or then make it the basis of claims that cover not just break off some of the studs on the back, which those two formulations, but any formulation that must be repaired or replaced before a refurbished has that characteristic.” Purdue Pharma , slip op. at platen may be reused. 14. The Court described this as “ exactly the type . F I N N EG A N H EN D ERSO N FA RA B O W G A RRET T D U N N ER L L P