Patent Pod

Stern sought addition as a co-inventor on Bito's patent for treating glaucoma. The C.A.F.C. found that co-inventors must both contribute to the conception of an invention. Conception is complete when "the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice." Stern was a medical student at Columbia University, where he performed one semester of ophthalmology research in Bito's laboratory. He performed tests under the Bito's direction, after reviewing Bito's publications. Stern only tested single applications of prostaglandins, where the patented treatment uses repetitive applications. Further, no evidence of collaboration was presented. Accordingly, the C.A.F.C. upheld the lower courts that Stern failed to present clear and convincing evidence of co-inventorship. See also, MP3: Stern v. Trustees of Columbia University, No. 05-1291 (Fed. Cir. 2006) (citations omitted) PDF: Stern v. Trustees of Columbia University, No. 05-1291 (Fed. Cir. 2006) (full text) IP Law Observer: Co-Inventorship Claim Fails Due to Insufficient Evidence

Pfizer (Warner-Lambert) seeks construction of the claim term "saccharides" that includes polysaccharides, such that Warner-Lambert's generic version of their patented pharmaceutical compositions commonly used to treat high-blood pressure. The C.A.F.C. sites Philips for the proposition that a "person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." The specification included a section entitled "saccharides," which includes substances compatible with the alkali or alkaline earth metal-containing stabilizers, preferably mannitol, lactose, and other sugars. Since each of these preferences have less than ten monosaccharide units, Teva (Ranbaxy) argues that saccharides should not include polysaccharides. The C.A.F.C. found that the specification enabled the claim language "saccharides" to include "polysaccharides." Ranbaxy contends that Warner-Lambert is not irreparable harmed because other competition is in the marketplace and Warner-Lambert has granted licenses. A court may presume irreparably harm when "a patent owner establishes a strong showing of likely infringement of a valid and enforceable patent." Warner-Lambert showed sales of Ranbaxy's product far in excess of the competition. Warner-Lambert only granted a license under the patent to a product different from the infringing product in this case. The C.A.F.C. found that lower court did not abuse its discretion by presuming irreparable harm. See also, MP3: Pfizer v. Teva Pharmaceuticals (Fed. Cir. 2006) (citations omitted) PDF: Pfizer v. Teva Pharmaceuticals (Fed. Cir. 2006) (full text) IP Law Observer: Generic Drug Manufacturer Properly Shut Down by Preliminary Injunction Patently-O: Disclosed Subject Matter Only Dedicated to the Public When Specifically Identified as an Alternative to a Claim Limitation I/P Updates: ANDA Time Limit Expiration Did Not Foreclose Preliminary Injunction I/P Updates: Unclaimed Matter Must Be Identified as Alternative to Claim Limitation for Dedication to the Public Patent Prospector: Sugared Preliminary Injunction

Norian owns a patent directed to kits "for preparing ... bone cements in medical or dental procedures." Claim 8 included the limitation "a sodium phosphate". The C.A.F.C. compared the limitation with the indefinite article A, to the previous limitation that used the phrase "at least one." Further, they noted the specification did not discuss any embodiment that included more than one sodium phosphate. Finally, claim eight uses the restrictive term, "consisting of". The C.A.F.C. upheld the claim construction to include only a single sodium phosphate. See also, MP3: Norian v. Stryker (Fed. Cir. 2005) (citations omitted) PDF: Norian v. Stryker (Fed. Cir. 2005) (full text) Patently-O: Claim Construction: "A sodium phosphate" limited to one type of sodium phosphate. I/P Updates: Solution "Consisting of a Sodium Phosphate" Required Single Solute

FieldTurf holds a patent on artificial turf. FieldTurf convinced a California School District to write an RFP for construction of a sports playing field, which included features of its patented artificial turf. SportFields, a competitor, convinced the School District to allow its competing product, however the RFP was not amended. SportFields won the bid. FieldTurf sued for patent infringement based on this infringing offer to sell. On appeal, the C.A.F.C. upheld the decision of non-infringement because SportsFields intended to provide its own product and did not intend to sell an infringing product. However, they reversed the finding FieldTurf tortuously interfered with SportField's prospective economic advantage, but stated that it was not unfair for FieldTurf to pursue its patent rights. See also, MP3: FieldTurf v. SprinTurf(Fed. Cir. 2006) (citations omitted) PDF: FieldTurf v. SprinTurf(Fed. Cir. 2006) (full text) Patently-O: Written Offer for Sale Not Infringing Without Evidence that Infringing Product Would have Been Sold

LizardTech's patent describes a method of compressing digital images using discrete wavelet transform (DWT), which results in a "seamless" DWT. The C.A.F.C. found that the specification failed to satisfy section 112, the written description requirement. Comparing two independent claims, they were nearly identical. Claim 21 did not include the term "seamless,” yet the specification disclosed only a single embodiment that described only seamless DWTs. The court concluded that the patent did not "reasonably convey to a person skilled in the art that the inventor had possession of the claimed subject matter at the time of filing." The Court held "that the description of one method for creating a seamless DWT does not entitle the inventor of the ’835 patent to claim any and all means for achieving that objective." See also, MP3: LizardTech v. Earth Resource Mapping(Fed. Cir. 2006) (citations omitted) PDF: LizardTech v. Earth Resource Mapping (Fed. Cir. 2006) (full text) Patently-O: CAFC Written Description Jurisprudence: "OPAQUE" IP Law Observer: Patentee Could Not Claim All Methods for Achieving a Result - Only the Single Method Described Satisfied the Written Description Requirement 271: Judge Rader: LizardTech May "Doom Any Hope" For Clarified Written-Description Test NAPP: Lizardtech, Inc. v. Earth Resource Mapping, Inc. Reinforces the Need to Disclose Multiple Embodiments in the Written Specification

Dr. Perricone holds patent claims for preventing sunburn and patent claims for treating sunburn, both by the method of applying ascorbyl fatty acid ester, which is a fat soluble form of Vitamin C, to the skin. Prior art disclosed the use of ascorbyl fatty acid ester in a cosmetic topical skin treatment. The C.A.F.C. found the preventing sunburn claims anticipated by the prior art because the preventing sunburn was an inherent property of the prior art. However, the C.A.F.C also found the preventing sunburn claims valid because the prior art did not disclose or suggest application to skin sunburn. The dissent argues that the prior art renders both patents anticipated because Dr. Perricone merely identified a new inherient property of the prior art. See also, MP3: Perricone v. Medicis Pharmaceutical (Fed. Cir. 2005) (citations omitted) PDF: Perricone v. Medicis Pharmaceutical (Fed. Cir. 2005) (full text) Patently-O: Rader and Bryson spar over anticipation of method of use claims IP Law Observer: Patent Claims for New Use of Existing Product in Treating Sunburn Were Valid Patent Prospector: Sunburned Patent Baristas: Federal Circuit Finds Distinction Between Topical Application For Treating v. Avoiding Sunburn

nCube’s holds a patent for high-bandwidth, multimedia data transer on a network. nCube prevailed in an literal patent infringment action against SeaChange. On appeal, SeaChange argued that the "upstream manager" limitation of the claim should be constrused according to embodiment taught by the patent, which relied upon "logical memory" addressing and not "physical memory". The CFAC upheld the claim construction, noting that the claim was broader than the embodiment taught. The dissent would have limited the claim because the "patentee clearly demonstrated that the upstream manager accomplishes routing by logical addressing". See also, MP3: NCube Corporation v. SeaChange International, Inc. (Fed. Cir. 2006) (citations omitted) PDF: NCube Corporation v. SeaChange International, Inc. (Fed. Cir. 2005) (full text) Patently-O: SeaChange: Over dissent, Court allows broad claim interpretation 271: Divegent Embodiment In Specification May Broaden Claim Scope Patent Prospector: SeaChange Downstream

Crater sued Lucent for missappropriation of trade secrets related to an under-sea fiber-optic coupling device. The government intervened to assert the 'state secret' privilege because divulging the information Crater requested during discovery would jeopardize national security. The C.A.F.C. affirmed the invocation of the state secrets privilege. However, the C.A.F.C. remanded for a determination of whether Crater may establish any claims without relying on the privileged information. See also,MP3: Crater v. Lucent(Fed. Cir. 2005) (MP3 citations omitted) (PDF); Patently-O: Government Secrecy Request Stalls IP Case. ; I/P Updates: 'State Secrets' Privilege Narrowly Construed in Trade Secret Case ; IP Law Observer: Dismissal of Trade Secret Claims to Protect Government State Secrets Was Premature; Just Observing: About Katrina & Use of State Secrets...; NPR: Administration Employing State Secrets Privilege at Quick Clip; CONSEJO: US Federal Circuit Holds US Navy Properly Invoked State Secrets Privilege In Trade Secrets Theft Case.

Custom Hardware Engineering repairs, on behalf of third-parties, data tapes manufactured by StorageTek. StorageTek asserted copyright infringement and certain D.M.C.A. claims because Custom Hardware made copies of tapes while repairing. The C.A.F.C. found that Custom Hardware's conduct may be within the scope of the copyright license granted to the third-party and the conduct may fall into the safe harbor provisions of the D.M.C.A. See also, MP3: Storage Technology v. Custom Hardware (Fed. Cir. 2005) (citations omitted) PDF: Storage Technology v. Custom Hardware (Fed. Cir. 2005) (full text) Patently-O: Federal Circuit Broadly Interprets Copyright Safe Harbor for Computer Repair IP Law Observer: Repair Company Likely to Prevail in Defense of Claims on Copying of Software and Circumvention of Access Codes for Maintenance IPBiz: CAFC addresses injunction, DMCA issues in Storage Technology v. Custom Hardware SVML: Storagetek ruling on DMCA, software copyrights madisonian.net: StorageTek Troubles Me

Wing Shing obtained a design patented on a coffeemaker, which it then licensed to Sunbeam, after Sunbeam had required certain astethetic changes to the coffeemaker. Sunbeam later had Simatelex produce additional coffeemakers for Sunbeam. After a dramatic reduction in volume, Wing Shing sued Simatelex for patent infringement. The C.A.F.C affirmed that Sunbeam was not a co-inventor and Wing Shing was not barred by the doctorine of equitable esttople. See also, MP3: Sunbeam v. Wing Shing (Fed. Cir. 2005) (citations omitted) PDF: Sunbeam v. Wing Shing (Fed. Cir. 2005) (full text)

Aquatex patented a method for cooling a person providing a multilayered, liquid retaining composite material, including a fiberfill batting material; soaking such composite material in a liquid; and evaporatively cooling the person by using the composite material as a garment. Techniche manufactures a garment comprising Vizorb, which is cellulose pulp that incorporated natural and synthetic fibers. The C.A.F.C. construed the term 'fiberfill batting material' would mean polyester to one of ordinary skill in the art, and therefore affirming no literal infringement. However, the court found that prosecution history did not prevent assertion of the doctrine of equivalents. Aquatex amended their claim by adding the limitation 'by evaporation'. While the prior art Aquatex was distinguishing itself from contained natural fibers, because Aquatex distinguished its invention by the method of evaporation, and not the structure of the material, Aquatex had not clearly and unmistakably surrendered natural fibers, and argument-based prosecutory estoppel did not apply. See also, MP3: Aquatex Industries v. Techniche Solutions (Fed. Cir. 2005) (citations omitted) PDF: Aquatex Industries v. Techniche Solutions (Fed. Cir. 2005) (full text) I/P Updates: Argument-Based Estoppel Avoided by Simultaneous Unrelated Amendment

Broadcast holds patented data-casting distributed-database technology that was originally claimed in a series of three Australian patents; followed by a single, consolidated PCT application; followed by a U.S. national stage application; followed by a continuation; followed by a divisional. The divisional, which the lower court found anticipated, claimed priority only to the national stage application and the continuation. The C.A.F.C. clarified 35 U.S.C. 120 by holding that an application claiming priority to an earlier application receives the benefit of the earlier application's priority date. Reversing the holding of anticipation, the court found that the divisional should receive the benefit of the PCT application's priority date. See also, MP3: Broadcast Innovation v. Charter Communications (Fed. Cir. 2005) (citations omitted) PDF: Broadcast Innovation v. Charter Communications (Fed. Cir. 2005) (full text) Patently-O: CAFC: Continuation Application Need Not Claim Priority to PCT Application I/P Updates: Priority Claim to National Stage Application Receives Benefit of PCT Filing Date IP Law Observer: Filing Date of PCT International Application Established Priority Date for Later Filed United States Application