Last The Federal Circuit month at FEDERAL CIRCUIT ORDERS EN BANC REHEARING OF IMPORTANT DOCTRINE OF EQUIVALENTS ISSUE Court, sua sponte, orders en banc rehearing to determine whether and under what circumstances a patentee can rely upon the DOE with respect to unclaimed subject matter disclosed in the specification. J . Service Co. , No. 99-1076 (Fed. Cir. J an. 24, ohnson & J ohnson Assocs., Inc. v. R.E 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1 ALLEGEDLY INADVERTENT AMENDMENT BARS ANY SCOPE OF EQUIVALENCE Public notice function of patents would be frustrated by forcing competitors to guess whether a patent’s claims were drafted and accepted in error. Pioneer Magnetics, Inc. v. Micro Linear Corp. , No. 00-1012 (Fed. Cir. J an. 23, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1 COURT REINSTATES PUNITIVE DAMAGES AWARD Court prevents Defendant from appealing punitive damages award given failure to appeal the issue on a previous appeal, despite the fact that the unconstitutionality of the punitive damages award arose only after the corresponding compensatory damages had been reduced after remand from the previous appeal. Tronzo v. Biomet, Inc. , No. 00-1007 (Fed. Cir. J an. 17, 2001) . . . . . . . . .2 DRILLING CLAIMS INVALID FOR LACK OF ENABLEMENT AND INDEFINITENESS Decision to keep correlation program as a trade secret, rather than disclose it in specification, proves fatal. Union Pacific Resources Co. v. Chesapeake E nergy Corp. , No. 00-1053 (Fed. Cir. J an. 5, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2 INTERPRETATION OF MEANS-PLUS-FUNCTION LIMITATION DEFEATS LIKELIHOOD OF SUCCESS ON INFRINGEMENT Washington, DC Preliminary injunction denied where Markman ruling prevents likelihood of success on 202-408-4000 infringement issue. Globetrotter Software, Inc. v. E lan Computer Group, Inc. , No. 00-1110 (Fed. Cir. J an. 18, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3 FEDERAL CIRCUIT “CUTS” AT LOST PROFITS AWARD FOR SAW BLADE PATENT Palo Alto Lost profits damages award based on induced infringement requires evidence to account for 650-849-6600 each direct infringement. Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus. Inc. , No. 00-1172 (J an. 8, 2001) (nonprecedential decision) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .4 Atlanta MOTIVATION TO COMBINE REFERENCES LEAVES CLAIMS UNPATENTABLE 404-653-6400 Board correctly found motivation to improve word-match, error-correction feature of dictation system in first reference by adding more advanced “ root-form” technique of second reference. In re Kurzweil, No. 00-1258 (Fed. Cir. J an. 24, 2001) (nonprecedential decision) . . . . . . . . . . . . . . .5 Tokyo 011-813-3431-6943 COURT’S CONSTRUCTIONS OF MEANS-PLUS-FUNCTION LIMITATIONS RESULT IN REMAND TO ITC ITC must consider equivalence of disclosed structure corresponding to means-plus-function Brussels limitations with structure of accused devices. Winbond E lecs. Corp. v. ITC , No. 01-1031 (Fed. Cir. 011-322-646-0353 J an. 30, 2001) (nonprecedential decision) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6 EDITED BY VINCE KOVALICK 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 scope of equivalents of a “ switching multiplier” Federal Circuit Orders En Banc limitation, if any, was barred by prosecution his- Rehearing of Important Doctrine tory estoppel. The district court interpreted the of Equivalents Issue claims and ruled that a “ non-switching multipli- er” is outside the proper scope of equivalents, In J ohnson & J ohnson Associates v. R.E . Service given the amendments made during prosecu- Co. , No. 99-1076 (Fed. Cir. J an. 24, 2001), the tion. The parties then stipulated to SJ of nonin- Federal Circuit ordered, sua sponte, that the case fringement, and Pioneer appealed. be heard en banc to determine when and under During prosecution of the ‘366 patent, in what circumstances a patentee can rely upon the response to a prior art rejection, Pioneer added DOE with respect to unclaimed subject matter two limitations to the independent claim, name- disclosed in the specification. The Court ordered ly “ switching analog multiplier circuit,” and the en banc hearing after initial arguments “ pulse-width modulator.” In the R emarks, before a three-judge panel on December 7, Pioneer stated that the reference cited by the 1999. E xaminer did not disclose the combination as set The Court also ordered new briefs to be filed forth in the amended claim, but Pioneer provid- and permitted the filing of amicus briefs. The ed no explanation for the addition of the supplemental briefing also applies to the more “ switching “ limitation. narrow question of whether in this case the jury’s At the district court level, Keith Beecher, the finding of infringement should be reversed patent attorney who had prosecuted the ‘366 01 page because the patentee was foreclosed from assert- patent, submitted a Declaration stating that the ing the DOE with respect to unclaimed subject “ switching” limitation was added inadvertently. matter disclosed in the specification. Specifically, the independent claim was said to have been amended to include the limitations of a dependent claim, and that dependent claim Allegedly Inadvertent did not include the “ switching” limitation. Thus, Pioneer argued that the inclusion of the “ switch- Amendment Bars Any Scope of ing” limitation was obviously inadvertent. Equivalence The Federal Circuit refused to consider the Beecher Declaration, concluding, based on F esto , J ason E . Gorden that only the public record of a patent’s prosecu- tion may be used to establish a reason for an [J udges: Mayer (author), Newman, and amendment. The Court also concluded that Lourie] regardless of the Beecher Declaration, inadver- tence was not an acceptable reason to overcome In Pioneer Magnetics, Inc. v. Micro Linear the estoppel in this case. According to the Corp. , No. 00-1012 (Fed. Cir. J an. 23, 2001), the Court, although the R emarks section of the Federal Circuit affirmed a judgment of nonin- Amendment at issue indicates that Pioneer had fringement based on prosecution history estop- amended claim 1 to state dependent claim 6 in pel, relying on its decision in F esto Corp. v. independent form, it is equally possible that Shoketsu Kinzoku Kogyo Kabushiki Co. , 234 F.3d Pioneer had intentionally added the “ switching” 558 (Fed. Cir. 2000) (en banc). limitation, but inadvertently failed to update the Pioneer Magnetics, Inc. (“ Pioneer” ) owns R emarks. Moreover, according to the Court’s U.S. Patent No. 4,677,366 (“ the ’366 patent” ) review of the prosecution history, Pioneer had that is directed toward a switched power supply, voluntarily amended the claims to avoid prior in particular, electrical circuits for converting art, which raises the estoppel issue. Under F esto , alternating current to a constant output voltage. the Court concluded, it need not speculate as to Pioneer sued Micro Linear Corporation (“ Micro the materiality of the amendment. Thus, the Linear” ) for patent infringement of the ‘366 Federal Circuit affirmed the judgment of nonin- patent. During a Markman briefing, the parties fringement. requested the district court to identify what . 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
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