J A N U A R Y 2 0 0 3 The Federal Circuit Last month at CLAIM TERM “SUBSTANTIALLY CONSTANT” IS NOT SO INDEFINITE AS Month at a Glance TO INVALIDATE The fact that the parties disagree about claim scope does not of itself render claim invalid as indefinite. Verve, LLC v. Crane Cams, Inc. , No. 01-1417 (Fed. Cir. Nov. 14, 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . .1 “UNIFORM FLEXIBLE FILM” IS NOT LIMITED TO UNIFORM THICKNESS Patent terms have meaning at time of application and are not subject to later revision by a supply contract. Middleton, Inc. v. Minnesota Mining and Mfg. Co. , No. 02-1151 (Fed. Cir. Nov. 27, 2002) . . . . . . . . . . . . . . . . . . . .1 PATENTEE’S THREATENING LETTERS WERE NOT UNFAIR COMPETITION Patentees do not violate the rules of fair competition by making accurate representations and are allowed to make representations that turn out to be inaccurate, provided they make them in good faith. Golan v. Pingel Washington, DC Enter., Inc ., No. 01-1626 (Fed. Cir. Nov. 7, 2002) . . . . . . . . . . . . . . . . . . . .2 202.408.4000 UNAMBIGUOUS TERM GIVEN ITS ORDINARY MEANING Atlanta, GA Among several common meanings, the specification serves to point away 404.653.6400 from the improper meanings and toward the proper meaning. Inverness Med. Switz. GmbH v. Princeton Biomeditech Corp. , No. 01-1188 (Fed. Cir. Cambridge, MA Oct. 31, 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .4 617.452.1600 DISTRICT COURT PROPER FOR GOVERNMENT-CONTRACTOR PATENT DISPUTE Palo Alto, CA 650.849.6600 28 U.S.C. § 1498(a) provides an affirmative defense for a government contractor, not a jurisdictional bar. Toxgon Corp. v. BNFL, Inc. , No. 02-1302 (Fed. Cir. Dec. 10, 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6 Reston, VA 571.203.2700 COMBINED REEXAM PROCEEDINGS LEADS TO REJECTION OF CLAIMS Until a PTO matter has been completed, the PTO may reconsider an Brussels earlier action. In re Bass , No. 02-1046 (Fed. Cir. Dec. 17, 2002) . . . . . . . . .6 + 32 2 646 03 53 COURT VACATES PRIOR DECISION FOR EN BANC REHEARING Tokyo Elan Pharms., Inc. v. Mayo Found. , 304 F.3d 1221 (Fed. Cir. 2002) . . . . . . . .7 + 03 3431 6943 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 Web site ( www.finnegan.com ). Given the small number of precedential decisions reported in November and December 2002, this edition includes those decisions from both months.
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 Claim Term “Substantially The Federal Circuit also reversed the dis- trict court’s judgment of anticipation by two Constant” Is Not So Indefinite Japanese patents. Notably, the asserted ref- as to Invalidate erences merely disclosed hollow push rods having a uniform, cylindrical diameter with Gordon Klancnik slightly narrower spherical-shaped ends. The Court essentially determined that the [Judges: Newman (author), Lourie, and claims, when properly construed, did not Clevenger] cover such a configuration. Accordingly, the ’315 patent was not invalid for anticipation. In Verve, LLC v. Crane Cams, Inc. , No. 01- 1417 (Fed. Cir. Nov. 14, 2002), the Federal Circuit vacated a district court’s SJ of indefi- “Uniform Flexible Film” Is Not niteness under 35 U.S.C. § 112, ¶ 2, Limited to Uniform Thickness reversed a judgment of invalidity for antici- pation under 35 U.S.C. § 102, and remand- Donald D. Min ed. The patent-in-suit, U.S. Patent No. [Judges: Rader (author), Clevenger, and 4,850,315 (“the ’315 patent”), relates to page 01 Linn] stronger push rods for internal-combustion engines used, for example, in automobiles. In Middleton, Inc. v. Minnesota Mining Push rods are part of the mechanism that and Manufacturing Company , No. 02-1151 open and close air intake and exhaust valves (Fed. Cir. Nov. 27, 2002), the Federal Circuit within the cylinders of engines. Specifically, reversed and remanded a SJ that U.S. Patent the ’315 patent claims a hollow push rod No. 4,944,514 (“the ’514 patent”) was not made from a single piece of metal with a infringed, either literally or under the DOE. diameter that is larger at the middle portion The Federal Circuit found that the district than at either end. court had failed to correctly construe the The claims recite a hollow push rod hav- claims and failed to determine whether ing a “substantially constant wall thickness” prosecution history barred Middleton, Inc. throughout the length of the tube. Because (“Middleton”) from relying on the DOE. the intrinsic evidence did not define “sub- Middleton owns the ‘514 patent, which stantially constant,” the district court held is directed to a material for finishing the top the claims invalid as indefinite. The Federal surface of a floor. The claims of the ‘514 Circuit concluded that the district court patent recite a floor covering having a employed the wrong standard, ruling that “material for finishing” and a “uniform flexi- the district court should have focused on ble film.” whether a person of ordinary skill in the art Minnesota Mining and Manufacturing would understand the term rather than on Company (“3M”) makes and sells a floor- whether the intrinsic evidence alone provid- covering product called Floorminders, which ed a clear definition. The Court observed is applied to a smooth floor, but uses a tex- that “substantially” often serves a valid pur- tured surface film. Middleton sued 3M, pose in patent claims. In fact, the very alleging that the Floorminders product nature of the invention may necessitate its infringed the ’514 patent. The district court usage, so that the patentee can claim the construed the phrase “uniform flexible film” true scope of the invention. Accordingly, to mean a film having a uniform thickness. the Court vacated the indefiniteness deci- However, the district court granted SJ of sion and remanded. 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
Recommend
More recommend
