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

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.

The United States Army Corps of Engineers awarded the company a contract for construction of a government hospital at Fort Benning. Two rival bidders each filed a bid protest with the Government Accountability Office, which recommended that the contract be re-procured without the company's participation. The GAO found organizational conflict of interest, focusing on the potential for access to nonpublic information and had concluding that the company had access to special knowledge of the Army's requirements that would give unfair advantage. The Army announced that it would follow the GAO recommendation and terminated the contract. The Court of Claims ordered reinstatement and the Federal Circuit affirmed. The Claims Court applied the correct standard of review in concluding that the termination was unreasonable. Th GAO identified no facts to indicated that the company actually had access to specific, sensitive information.

A 2007 patent litigation settlement agreement included a covenant not to sue that stated that it applied to customers of the defendants, who were intended beneficiaries, and a governing law/venue provision specifying New Mexico. In September 2010, plaintiff filed a complaint with the International Trade Commission alleging infringement by defendant and its U.S. distributors and filed a complaint in the Northern District of California alleging infringement of the same two patents, which issued after the settlement agreement but are continuations depending from the applications that were at issue in the settlement. The New Mexico district court entered a preliminary injunction, enforcing the forum selection clause. Plaintiff dismissed its ITC and California claims. The Federal Circuit affirmed the entry of the injunction; the issues relate to and arise out of the settlement agreement district court correctly applied the factors of irreparable harm, balance of hardships, and public interest.

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 World War II veteran died in 2004, during litigation of whether a hip injury was service-related. The VA dismissed a pending appeal as moot and rejected the widow's request to be substituted. The Federal Circuit reversed. The widow filed her own claim for accrued benefits. The motion to substitute was denied, but the widow was awarded accrued benefits and sought $87,802.17 in attorney fees and expenses under the Equal Access to Justice Act, 28 U.S.C. 2412. The veterans' court determined that the widow had the right, as representative of the estate, to recover fees for attorney hours expended prior to his death, but had no right to recover fees for work performed after her husband’s death. The Federal Circuit reversed, stating that attorney work performed after the veteran's death was directly related to his claim; it was his claim, not the widow's claim, that was being litigated.

In order to determine an antidumping margin, Commerce must compare sales in the exporter’s home market with sales in the United States. 19 U.S.C. 1677(16). In its review of ball bearings, Commerce previously used the family model match methodology and considered sales of products in the exporter’s home market that had the same physical characteristics as the U.S. sale as part of the family of merchandise to average the prices of the family. Commerce later changed to the sum of the deviations method, which allows comparison of the U.S. sale to the sales of a single product in the exporter’s home market. The method uses the same characteristics, but weighs them differently. The Court of International Trade agreed with Commerce . The Federal Circuit vacated and remanded, holding that Commerce need not reconsider its model match methodology, but must explain why it continues to use zeroing in Administrative Reviews while discontinuing the practice in investigations. Zeroing is the practice whereby the values of positive dumping margins are used in calculating the overall margin, but negative dumping margins are included in the sum of margins as zeroes.