JUNE/JULY* 2004 Last The Federal Circuit month at Month at a Glance REWRITING DEPENDENT CLAIMS INTO CLAIMS FOR DETECTING AND LOCALIZING A INDEPENDENT FORM RAISES PRESUMPTION OF TUMOR MAY BE INFRINGED UNDER DOE PROSECUTION HISTORY ESTOPPEL Absent a formal relationship or incorporation during prosecution, the new-matter content of a first patent Rewriting dependent claims into independent-claim is not available to construe the claims of a second form and canceling the original independent claims patent. Goldenberg v. Cytogen, Inc. , No. 03-1409 creates a presumption of prosecution history estop- (Fed. Cir. June 23, 2004) . . . . . . . . . . . . . . . . . . .5 pel. Honeywell Int’l, Inc. v. Hamilton Sunstrand Corp. , No. 02-1005 (Fed. Cir. June 2, 2004) . . . . . . . . . .1 PREAMBLE IS NOT A CLAIM LIMITATION Because preamble is not a claim limitation, findings of inadequate written description and inequitable FAILURE TO FILE TRANSLATION OF APPLICATION conduct based on the preamble were erroneous. PROVES FATAL IN INTERFERENCE Intirtool, Ltd. v. Texar Corp. , No. 03-1394 (Fed. Cir. Compliance with filing requirements for international May 10, 2004) . . . . . . . . . . . . . . . . . . . . . . . . . .6 applications entering the national stage is not suffi- cient to prove constructive reduction to practice in CLAIMED DECKING BOARD NEED NOT BE MADE interference proceeding. Stevens v. Tamai , OF WOOD No. 03-1479 (Fed. Cir. May 4, 2004) . . . . . . . . . .1 Speculative modeling premised on unstated assump- tions in prior art patent drawings cannot be the basis for challenging validity of claims reciting specific A GENERAL-USAGE DICTIONARY CANNOT Washington, DC dimensions not disclosed directly in such prior art. OVERCOME CREDIBLE ART-SPECIFIC EVIDENCE 202.408.4000 Nystrom v. Trex Co., No. 03-1092 (Fed. Cir. OF MEANING OF CLAIM TERM June 28, 2004) . . . . . . . . . . . . . . . . . . . . . . . . . .7 Where evidence, such as expert testimony or techni- Atlanta, GA cal dictionary, demonstrates that artisans would BOARD’S BROAD CLAIM CONSTRUCTION 404.653.6400 attach meaning to claim term, general-usage AFFIRMED, CLAIMS ANTICIPATED dictionaries are irrelevant. Vanderlande Indus. Construing claims broadly during prosecution is not Nederland BV v. Int’l Trade Comm’n , No. 03-1349 unfair to an applicant because the applicant has the Cambridge, MA (Fed. Cir. May 3, 2004) . . . . . . . . . . . . . . . . . . . .2 opportunity to amend the claims to obtain more 617.452.1600 precise claim coverage. In re Am. Acad. of Sci. Tech Ctr. , No. 03-1530 (Fed. Cir. May 13, Palo Alto, CA PATENT LICENSE CARRIES IMPLIED RIGHTS 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8 650.849.6600 FOR CUSTOMERS Under basic contract-law principles, a party may not PROPER CLAIM CONSTRUCTION LEADS TO NO assign a right, receive consideration for it, and then INFRINGEMENT Reston, VA take steps that would render the right commercially Ordinary dictionary definition of claim term leads to 571.203.2700 worthless. Jacobs v. Nintendo of Am., Inc. , noninfringement of patents for screening for protein No. 03-1297 (Fed. Cir. May 28, 2004) . . . . . . . . .3 inhibitors and activators. Housey Pharms., Inc. v. Astrazeneca UK Ltd. , No. 03-1193 (Fed. Cir. May 7, Brussels + 32 2 646 0353 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .9 “CIRCUIT”-PLUS-FUNCTION IS NOT MEANS-PLUS- FUNCTION FUEL PUMP PATENT NOT INFRINGED Taipei When the term “circuit” is claimed with a description Properly construed claims result in affirmance of + 886 2 2712 7001 of the circuit’s operation, sufficient structural mean- JMOL of noninfringement but reversal of JMOL of no ing generally will be conveyed to persons of ordinary invalidity with remand for further inquiry on the skill in the art, and § 112, ¶ 6 presumptively will not issue. TI Group Auto. Sys. (N. Am.), Inc. v. VDO Tokyo apply. Linear Tech. Corp. v. Impala Linear Corp. , N. Am., LLC , No. 02-1630 (Fed. Cir. June 30, + 03 3431 6943 No. 02-1569 (Fed. Cir. June 17, 2004) . . . . . . . . .4 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10 EDITED BY VINCE KOVALICK This publication brings you a synopsis of patent cases decided last month by the United States Court of Appeals for the Federal Circuit based on slip opinions received from the court. You can review and download the full text of each opinion by visiting our website at www.finnegan.com *Given the number of cases decided in May and June, we consolidated them into a single issue.
L A S T M O N T H A T T H E F E D E R A L C I R C U I T Rewriting Dependent Claims into matter. Accordingly, the Court reasoned, the fact that the scope of the rewritten claim has remained Independent Form Raises unchanged does not preclude the application of Presumption of Prosecution History prosecution history if, by canceling the original Estoppel independent claim and rewriting the dependent claims in independent form, the scope of subject Vince Kovalick matter claimed in the independent claim has been narrowed to secure the patent. [En banc, Dyk (author), Newman The Federal Circuit dug deep to find support (dissenting-in-part)] for its ruling, even citing an old decision by Judge Learned Hand, Keith v. Charles E. Hires Co. , 116 In Honeywell International, Inc. v. Hamilton F.2d 46 (2d Cir. 1940). In Keith , Judge Hand Sunstrand Corp. , No. 02-1005 (Fed. Cir. June 2, found no difference between the situation where a 2004), the Federal Circuit held that the rewriting claim was amended to secure allowance and one of dependent claims into independent form cou- where the applicant files both a limited claim and pled with the cancellation of the original inde- a broader claim at the same time and then cancels pendent claims creates a presumption of prosecu- the broader claim when it has been rejected. tion history estoppel. After revealing its ruling, the Court cautioned Honeywell International, Inc.’s (“Honeywell”) that the presumption of surrender applies only to patents are directed to an aircraft auxiliary power the amended or newly added limitation, not the unit (“APU”), which is typically used on aircraft to whole claim. There is no surrender concerning page 01 generate electricity and compress air. The the limitations present in the original independent Honeywell APU was designed to avoid air surges claim. Equivalents are presumably not available by controlling a surge-bleed valve. only with respect to the limitation added from the The decision concerned three claims from two dependent claim. Having so ruled, the Federal different patents. Each of the three claims origi- Circuit remanded the case for the district court to nated as a dependent claim that depended from a determine whether the patentee could overcome rejected independent claim. The Examiner indi- the presumption of estoppel. cated that these three claims would be allowable Judge Newman dissented, concluding that if rewritten into independent form, and Honeywell the majority’s decision directly contradicts responded by canceling the rejected independent 35 U.S.C. § 112, ¶ 4. She concluded that this claims and amending the dependent claims to new rule will simply raise the costs and increase expressly incorporate the limitations of the reject- the difficulty of examining patents because practi- ed independent claims. At trial, a jury found will- tioners will simply move away from using depend- ful infringement based on the DOE and awarded ent claims. In her opinion, 35 U.S.C. § 112, ¶ 4 over $45 million in damages. assured that claim scope is unrelated to whether The Federal Circuit initially answered a less the claim is in independent or dependent form, controversial question, ruling that an amendment and the Supreme Court did not change that law adding a new claim limitation constitutes a nar- in Festo . rowing amendment that gives rise to an estoppel, just like an amendment that narrows a preexisting claim limitation. The Court then tackled the more Failure to File Translation of controversial issue of whether rewriting a depend- Application Proves Fatal in ent claim into independent form, coupled with Interference the cancellation of the original independent claim, constitutes a narrowing amendment. Honeywell, Aaron L. Parker of course, argued that although it had surren- dered the broader independent claims, there [Judges: Clevenger (author), Michel, and should be no presumption of surrender because Schall] the scope of the rewritten dependent claims had not been narrowed. The Federal Circuit rejected In Stevens v. Tamai , No. 03-1479 (Fed. Cir. this argument, however, and concluded that in May 4, 2004), the Federal Circuit reversed the Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. , judgment of the Board for Tamai, the senior-party 535 U.S. 722 (2002), the Supreme Court held applicant in an interference proceeding, with that the proper focus is whether the amendment instructions to enter judgment for Stevens, the narrows the overall scope of the claimed subject L L P . F I N N E G A N H E N D E R S O N F A R A B O W G A R R E T T D U N N E R
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