Justia U.S. Federal Circuit Court of Appeals Opinion Summaries

The rejected patent claim is one of several that describe a system for sending information (electronic mail) from an originating processor (personal computer) to a destination processor (mobile computer) using an intermediary (radio frequency receiver). Prior art systems required connection to a public switched phone line and were limited by difficulty in locating a phone jack. The Board of Patent Appeals affirmed the rejection, construing the term "destination processor," to mean the "particular end node device to which the intended user recipient of electronic mail has immediate and direct physical access when accessing and viewing electronic mail;" determining that the applicant was not entitled to claim priority; and finding that the claim was anticipated by prior art. The Federal Circuit affirmed. The Board properly relied on the written description in construing "destination processor." Nothing in 35 U.S.C. 301 prohibits an examiner from determining, on re-examination, whether a priority date was properly claimed during the original examination; such a determination was proper in this case because the examiner did not consider priority during the original prosecution.

The seven rejected patent claims describe a system for sending information (such as electronic mail) from an originating processor (i.e., a personal computer) to a destination processor (i.e., a mobile computer) using an intermediary (a radio frequency receiver). Prior art systems required connection to a public switched phone line and were limited by difficulty in locating a phone jack. The inventors set out to solve this problem by introducing a radio frequency network. The Board of Patent Appeals affirmed. The Federal Circuit vacated in part, reversed in part and remanded. The Board’s construction of the term "electronic mail [message]" was unreasonably broad, but the Board correctly found that the applicant failed to "swear behind" certain references (37 C.F.R. 1.131) and corroborate its claim that the system was reduced to practice prior to the "critical date" on which it appeared in print.

The district court held that medical organizations, researchers, genetic counselors, and patients had standing under the Declaratory Judgment Act to challenge patent claims to "isolated" DNA molecules and granted summary judgment that all of the challenged claims were drawn to non-patentable subject matter under 35 U.S.C. 101. The Federal Circuit affirmed with respect to standing and reversed, in part, on the merits. Section 101 does not prohibit patent of molecules that do not exist in nature. A method claim to screening potential cancer therapeutics via changes in cell growth rates is patentable; it is not directed to a patent-ineligible scientific principle. The district court correctly determined that method claims directed to "comparing" or "analyzing" DNA sequences are patent ineligible; the claims include no transformative steps and cover only patent-ineligible abstract, mental steps.

The district court construed the terms "document," "file,"extract," and "template" in patents relating to document processing systems, entered a finding of non-infringement, and awarded $489,150.48 in attorney fees and costs and $141,984.70 in sanctions for violation of Rule 11. The Federal Circuit affirmed.The district court properly made an "exceptional case" finding, based on plaintiff's litigation misconduct and baseless infringement action, and awarded attorney fees and sanctions.

The 2004 application was directed to a method and system of friction welding; in friction welding, a first part is rotated rapidly and brought into contact with a second part so that the heat generated between the parts fuses them. This causes material from the parts to be displaced or upset, reducing the combined lengths of the welded parts. The invention of the application is designed to decrease the variation in upset between parts from repeated use of the welding machinery by modulating the torque applied to the rotating first part. The application had 34 claims. The examiner rejected claims 1–24 and 30–34 for obviousness over three prior art references. The Board held that claims 1, 8, 17, and 23 would have been obvious and affirmed rejection of claim 30. The Federal Circuit affirmed. The Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.

Plaintiff, a pharmaceutical company, owns a patent that claims conjugated estrogen pharmaceutical compositions for use in hormone replacement therapies. Plaintiff alleged infringement of the patent based on defendant's Abbreviated New Drug Application for a generic version of plaintiff's hormone replacement therapy product, arguing the doctrine of equivalents. The district court entered summary judgment for defendant. The Federal Circuit affirmed. Plaintiff failed to rebut the presumption of prosecution history estoppel based on unforeseeability. The doctrine of prosecution history estoppel prevents a patent owner from recapturing, through the doctrine of equivalents, subject matter surrendered to acquire the patent. Because plaintiff narrowed the scope of the patent's claims in response to a prior art rejection, a presumption of prosecution history estoppel applies.

A jury found infringement of certain claims of plaintiff's patents, relating to retractable syringes, which are medical syringes that feature a needle that retracts into the syringe body after the syringe is used, and found that the asserted patents were not invalid for anticipation or obviousness. The federal circuit affirmed in part and reversed in part.court erred in its construction of the claim term "body;" in light of the specifications, that term refers to a one-piece structure.

The patents concern vehicle computer systems. The car-mail patents cover systems for notifying owners about the condition of the vehicle; the radio patent relates to the entertainment system. Service provider patents concern maintenance; search patents and status patents allow searches of vehicle systems. A notable-condition patent relates to emergent situations. The district court found the status patent, the car-mail patent, and notable condition patent unenforceable due to inequitable conduct; granted summary judgment of noninfringement of the car-mail patents, service provider patents, and the radio patent; and granted summary judgment of infringement of the notable condition patent. The Federal Circuit affirmed the determinations of noninfringement, reversed with respect to validity of the notable condition patent, and vacated and remanded the decision on inequitable conduct. To prove inequitable conduct, the accused infringer must provide evidence that the applicant misrepresented or omitted material information with specific intent to deceive the patent office. The district court applied the wrong standard in finding intent and failed to make a finding that the withheld information would have blocked issuance of the patents.

Plaintiff and defendant had co-pending patents relating to innovations in dietary supplements, particularly formulations that increase the bioavailability of creatine, an amino acid derivative naturally present in muscle tissue. Plaintiff sought a declaratory judgment that the defendant's patent was invalid and not infringed; defendant responded alleging infringement and seeking declaratory judgment that plaintiff's patent was invalid. The district court ruled in favor of defendant. The Federal Circuit affirmed in part and reversed in part. Defendant's patent is not invalid and is infringed, but the court lacked jurisdiction with respect to plaintiff's patent. The court applied the correct standard under 35 U.S.C. 282: each claim of patent is presumed valid, an accused infringer must prove invalidity by clear and convincing evidence. The plaintiff did not establish prior invention or disclosure in prior art. Plaintiff offered no argument as to why or how the process it employed did not infringe defendant's patent. Plaintiff never accused defendant of infringement; defendant has, at most, an economic interest in clarifying its customers' rights under plaintiff's patents. Absent a substantial controversy between the parties, the court lacked declaratory judgment jurisdiction.

Plaintiff holds a patent on formulations of a hypnotic sleep-inducing drug that is one of a class of compounds known as benzodiazepines. Pharmacological formulations of the drug have been marketed internationally for the treatment of insomnia since the 1970s, and in the United States since 1981. Plaintiff responded to an FDA filing by a competitor by filing an infringement claim. The district court found plaintiff's patents invalid on grounds of obviousness. The Federal Circuit affirmed. The only limitation of the disputed claims that was not fully disclosed by the prior art capsules is the lower dosage; those skilled in the art (physicians) have an undisputed preference for prescribing the lowest effective dose.