Last Month At The Federal Circuit - October, 2009

Contents Where There Is No Clear Disavowal of Claim Scope, a Patentee's Express Definition of a Claim Term Controls Martek Biosciences Corp. v. Nutrinova, Inc. Nos. 08-1459, -1476 (Fed. Cir. Sept. 3, 2009) [Appealed from D. Del., Chief Judge Sleet] Use of the Term "Comprising" Does Not Render a Claim Anticipated by a Device That Contains Less Than What Is Claimed In re Skvorecz No. 08-1221 (Fed. Cir. Sept. 3, 2009) [Appealed from Board] Res Judicata Applies When Device Accused in Second Suit Remains Unchanged with Respect to Claim Limitations at Issue in First Suit Nystrom v. Trex Co. No. 09-1026 (Fed. Cir. Sept. 8, 2009) [Appealed from E.D. Va., Judge Davis] Structural and Functional Analysis of Disclosed and Prior Art Elements Are Required When Means-Plus-Function Limitations Are at Issue Fresenius USA, Inc. v. Baxter International, Inc. Nos. 08-1306, -1331 (Fed. Cir. Sept. 10, 2009) [ Appealed from N.D. Cal., Judge Armstrong] Federal Circuit Vacates $358 Million Jury Award in Microsoft Infringement Case Lucent Technologies, Inc. v. Gateway, Inc. Nos. 08-1485, -1487, -1495 (Fed. Cir. Sept. 11, 2009) [Appealed from S.D. Cal., Judge Huff] 35 U.S.C. § 121 Safe Harbor from Double Patenting Rejections Does Not Apply to Continuation Applications Amgen Inc. v. F. Hoffman-La Roche Ltd. Nos. 09-1020, -1096 (Fed. Cir. Sept. 15, 2009) [Appealed from D. Mass., Judge Young] Claims to Methods of Optimizing Therapeutic Efficacy Are Patent-Eligible Subject Matter Under 35 U.S.C. § 101 Prometheus Laboratories, Inc. v. Mayo Collaborative Services No. 08-1403 (Fed. Cir. Sept. 16, 2009) [Appealed from S.D. Cal., Judge Houston] Judgment of No Direct Infringement Reversed in Part Due to Application of Disclaimer Inconsistent with Claim Construction Order Vita-Mix Corp. v. Basic Holding, Inc. Nos. 08-1479, -1517 (Fed. Cir. Sept. 16, 2009) [Appealed from N.D. Ohio, Judge Gaughan] Patentee Who Retains Substantial Rights in Patent Must Join Exclusive Licensee in Infringement Suit Despite Terms of License AsymmetRx, Inc. v. Biocare Medical, LLC No. 09-1094 (Fed. Cir. Sept. 18, 2009) [Appealed from D. Mass., Judge Stearns] Written Description and Prosecution History May Trump the Plain Language of the Claims and the Doctrine of Claim Differentiation During Claim Construction Edwards Lifesciences LLC v. Cook Inc. No. 09-1006 (Fed. Cir. Sept. 22, 2009) [Appealed from N.D. Cal., Judge White] Absent Evidence of Cataloging Date, a Reference Registered at the Copyright Offi ce and Cataloged in Commercial Databases May Not Be "Publicly Accessible" Prior Art In re Lister No. 09-1060 (Fed. Cir. Sept. 22, 2009) [Appealed from Board] Genuine Issues of Material Fact Preclude SJ on Breach of a Nondisclosure Agreement Due to Misuse of Confidential Information Kara Technology Inc. v. Stamps.com, Inc. Nos. 09-1027, -1028 (Fed. Cir. Sept. 24, 2009) [Appealed from C.D. Cal., Judge Marshall] Patent Claiming a Method of Treatment Was Not Enabled Where It Failed to Establish Utility In re '318 Patent Infringement Litigation Nos. 08-1594, 09-1070, -1088 (Fed. Cir. Sept. 25, 2009) [Appealed from D.N.J., Judge Pisano, and D. Del., Judge Robinson] Failure to Provide Unpublished Information About Less Similar Compounds Is Not Inequitable AstraZeneca Pharmaceuticals LP v. Teva Pharmaceuticals USA, Inc. Nos. 08-1480, -1481 (Fed. Cir. Sept. 25, 2009) [Appealed from D.N.J., Judge Pisano] Communications from the Government, Reinforced by Its Representations to the Federal Circuit, Can Establish the Applicability of § 1498(a) Advanced Software Design Corp. v. Federal Reserve Bank of St. Louis No. 08-1152 (Fed. Cir. Sept. 30, 2009) [Appealed from E.D. Mo., Judge Perry] Plaintiff Lacked Standing to Sue for Patent Infringement Where an Inventor Validly Transferred His Title to a Third Party Before Reducing It to Practice Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc. Nos. 08-1509, -1510 (Fed. Cir. Sept. 30, 2009) [Appealed from N.D. Cal., Judge Patel] SPOTLIGHT INFO: In August 2007, the PTO published its Final Rules, entitled "Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims and Examination of Claims in Patent Applications." 72 Fed. Reg. 46716-46843 (Aug. 21, 2007). The Final Rules included various regulations designed to limit the practice of filing continuation applications and requests for continued examination. The Final Rules provided several restrictions, such as the proposed "Continuation Rule," which would have limited an applicant to only two continuation applications per family as a matter of right. Similarly, the "RCE Rule" would have allowed one request for continued examination per application family as a matter of right. If an applicant wished to file a subsequent continuation application or RCE, however, the applicant would have had to seek permission from the PTO and demonstrate why the additional filing was necessary. In addition, the "Claims Rule" of the Final Rules proposed that an applicant could only file five independent claims and twenty-five total claims per application. If an applicant wished to file more than five independent claims or more than twenty-five total claims, then the applicant would be required to supply information to the PTO about the claimed invention. These Final Rules were intended to become effective in November 2007.

Shortly after the Final Rules were published, however, Dr. Triantafyllos Tafas and GlaxoSmithKline ("GSK") filed motions to enjoin the Final Rules in the Eastern District of Virginia. The district court granted the request and temporarily enjoined the rules, pending the outcome of the litigation. In April 2008, the district court issued a final ruling in favor of Tafas and GSK, holding that the PTO had exceeded its authority, and permanently enjoining the PTO from implementing the Final Rules. In March 2009, on appeal, a divided panel of the Federal Circuit affirmed that judgment in part and reversed it in part. In July 2009, the Federal Circuit vacated the divided-panel decision and agreed to hear the matter en banc. On October 8, 2009, however, GSK and the PTO announced that they would jointly move to dismiss the litigation over the Final Rules. GSK and the PTO filed the joint motion the next day. As a result, the Final Rules will not be implemented, and the patent system that existed before this litigation will remain in place.

Where There Is No Clear Disavowal Of Claim Scope, A Patentee's Express Definition Of A Claim Term Controls Article by John W. Cox

Judges: Newman, Lourie (dissenting-in-part), Rader (dissenting-in-part, joining Lourie), Gajarsa (author), Moore [Appealed from D. Del., Chief Judge Sleet] In Martek Biosciences Corp. v. Nutrinova, Inc., Nos. 08-1459, -1476 (Fed. Cir. Sept. 3, 2009), the Federal Circuit affi rmed the district court's denial of JMOL that the claims of Martek Biosciences Corp.'s ("Martek") U.S. Patent No. 5,340,594 ("the '594 patent") were invalid and that Nutrinova, Inc., Nutrinova Nutrition Specialties and Food Ingredients GmbH, and Lonza, Ltd. (collectively "Lonza") did not infringe claims of U.S. Patent No. 6,410,281 ("the '281 patent"). The Court also found that the district court did not abuse its discretion in excluding Lonza's prior inventorship evidence, and that the district court correctly construed the term "non-chloride sodium salt." Finally, the Federal Circuit reversed the district court's grant of JMOL that the asserted claims of Martek's U.S. Patent No. 6,451,567 ("the '567 patent") were invalid and reversed the district court's construction of the term "animal" in Martek's U.S. Patent No. 5,698,244 ("the '244 patent").

Martek and Lonza make and sell products containing docosahexaenoic acid ("DHA"), an essential omega-3 fatty acid involved in organ development. Because the human body produces limited quantities of DHA, it is desirable to provide supplemental DHA.

Martek asserted that Lonza infringed claims of the '594, '281, '567, and '244 patents, which relate to specifi ed microorganisms that are useful for the commercial production of DHA. Lonza argued that the asserted claims were invalid under 35 U.S.C. §§ 102, 103, and 112. The district court construed the contested claim terms and, based on the construction, Martek stipulated that Lonza did not infringe the asserted claims of the '244 patent, but preserved its right to appeal the court's construction of "animal." A jury then found the remaining asserted claims infringed and not invalid, and further found that Lonza's infringement of the '281 patent claims was willful. The district court granted Lonza's motion for JMOL that the '567 patent claims were invalid for lack of enablement, and Martek's motion for a permanent injunction. Both parties appealed.

On appeal, Lonza argued that the '594 patent...