Tribunal
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Date
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Case #
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Origin
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Parties
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Comments
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BAI
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31-Jan-96
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Appeal No.
95-0796
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Ex parte Bhide
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Treatment of cancer is no longer
incredible. Showing that compounds
inhibit farnesyl protein transferase is
tantamount to showing treatment of
cancer as a utility. Examiner's
statements (1) that as a result of the
breadth of R, the claims can include
thousands of compounds and (2)
pointing out a few compounds without
pointing out a few compounds without
showing whether any of them are useful
showing whether any of them are useful
or not useful does not meet the burden
of proof for a rejection under 35 USC
101. References indicating the need for
a cysteine amino acid for the farnesyl
protein transferase inhibition without any
evidence to the contrary presented by
the applicant was enough to establish a
doubt as to the credibility of the
Applicants' statements regarding utility
and for rejecting the claims under 35
USC 101 and 112, first paragraph
breadth of R, the claims can include
thousands of compounds and (2)
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BAI
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13-Aug-97
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Patent
Interference
No. 103,694
No. 103,694
Interference
No. 103,694
|
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Basmadjian v. Landry
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Discussion of Summary Judgement
before the BAI
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CAFC
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5-Nov-96
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96-1078,-10
99
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SCT
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INSITUFORM
TECHNOLOGIES, INC.,
INSITUFORM
(Netherlands) B.V., and
INSITUFORM GULF
SOUTH, INC.
v.
CAT CONTRACTING,
INC., MICHIGAN SEWER
CONSTRUCTION,
KANAL SANIERUNG
HANS
MUELLER GmbH & CO
KG and INLINER U.S.A.
|
The CAFC interpreted the clause,
"disposing over the window a cup" as
referring to only one cup, even though
the claim never states only one cup and
even though the word "comprising" is
used as the transition from the used as
preamble to the body of the claim. The
CAFC noted that the specification never
indicates that more than one cup can be
used, and that using multiple cups would
be inconsistent with using a continuous
vacuum. The CAFC interpreted the
claim as requiring a discontinuous
vacuum even though the claim never
explicitly states there is discontinuous
vacuum. The claim refers to "drawing
through the window a vacuum" and
"when the resin reaches the vicinity of
the region of vacuum the application,
removing the cup and sealing the
window," which could be interpreted as
implying that the cup is in the vacuum
until removed. In making this
interpretation, the CAFC relies heavily
on their interpretation of the phrase
"drawing a vacuum." The CAFC stated,
"While adding elements may, in certain
instances, fail to prevent a finding of
infringement, it will prevent a finding of
literal infringement where, as here, the
claim is specific as to the number of
elements (one cup)...." The CAFC
noted that the specification never
indicates that more than one cup can be
used, and that using multiple cups would
be inconsistent with using a have
continuous vacuum. The CAFC
apparently interprets "drawing" a
vacuum as restarting the vacuum.
Possibly, the CAFC would have come to
a different conclusion were they not
interpreting drawing a vacuum as
restarting the vacuum. The clause is
part of a method step in a method claim.
Thus, apparently the CAFC would agree
that the claim is generic to having other
unrecited steps. Thus, apparently the
CAFC would apparently agree that the
claim is generic to having other
unrecited steps.
|
CAFC
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4-Oct-04
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99-1584
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SCT
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INSITUFORM
TECHNOLOGIES, INC.,
INSITUFORM
(Netherlands) B.V.,
and INSITUFORM GULF
SOUTH, INC.,
v.
CAT CONTRACTING,
INC., MICHIGAN SEWER
CONSTRUCTION,
KANAL SANIERUNG
HANS
MUELLER GmbH & CO
KG and INLINER U.S.A.
|
The CAFC recognized the doctrine of
equivalence for extending the coverage
of a claim to a device including multiple
cups even though the claim had been
narrowed to recite "a cup." The CAFC
reasoned that the narrowing of the claim
to recite "a cup" was tangential to the
reasons for amending the claim. The
CAFC noted that the claim was amended
for the sake of overcoming prior art
which only showed one cup. Regarding
the CAFC's interpretation of the phrase
"a cup" as meaning only one cup see
CAFC docket # 96-1078.
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CAFC
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7-Oct-04
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03-1528
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PTO
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Bilstad, et al. v.
Wakalopulos, et al.
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After filing, the claim was amended to
recite a "plurality". The court reversed
the Board of Appeals and Interferences,
and decided that a "plurality" is
supported by specifications recitation of
"a small number", even though a plurality
is open ended, and "a small number" is
not.
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CAFC
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13-Oct-04
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04-1291
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DCT
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On-Line Technologies v.
Bodenseewerk
Perkin-Elmer GmbH, et
al.
|
In interpreting "substantially spherical"
as generic to toroidal, the Court again
invokes the principle that “a claim
interpretation that excludes a preferred
embodiment from the scope of the claim
‘is rarely, if ever, correct.’” Globetrotter
Software, Inc. v. Elan Computer Group,
Inc., 362 F.3d 1367, 1381 (Fed. Cir.
2004), quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1583
(Fed. Cir. 1996); see also Int’l Rectifier
Corp. v. IXYS Corp., 361 F.3d 1363,
1371 (Fed. Cir. 2004); Modine Mfg. Co.
v. U.S. Int’l Trade Comm’n, 75 F.3d
1545, 1550 (Fed. Cir. 1990). It would
appear, however, that the invoking of
this principle was unnecessary.
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CAFC
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20-Oct-04
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04-1024
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DCT
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Bernhardt, L.L.C., v.
Collezione Europa USA,
Inc.
|
Lack of NDA is just one component that
may make a use public. The fact that
there was control over removal of the
invention from the premises was enough
to establish that the use was not public,
despite the lack of an NDA. Which
attendees came was controlled, and
there was an industry expectation of
confidentiality in this type of display.
Submitting prosecution history was
enough evidence for determining the
novel features. No witnesses are
required for determining the novel
features of the patent.
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CAFC
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29-Oct-04
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04-1135
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DCT
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C.R. BARD, INC. and
DAVOL INC., v. UNITED
STATES SURGICAL
CORP.
|
In addition to relying on the prosecution
history, the lower court construed the
claim as a means plus function claim,
because it was agreed to amend the
claim to means plus function format in an
interview with the Examiner, even though
the claim was never actually amended as
to be a means plus function claim. The
CAFC did not rule on whether the
interpretation of the claim as a means
plus function claim was proper. Also,
although it would seem unnecessary, the
court spent considerable time showing
that the specification limits the claims to
having an unrecited pleat, because of
"global" statements made in conjunction
with the preferred embodiment, in the
summary of the invention, and in the
abstract, as well as in other locations in
the specification.
|
CAFC
|
Dec. 2,
2004
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04-1267
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PTO
|
IN RE DANIEL S.
FULTON and JAMES
HUANG
|
CAFC upheld the BAI's rejection, which
relied on a non-preferred embodiment.
The CAFC stated,"Reasons why a
hexagonal surface would be well-suited
for obtaining good traction include the
fact that the greater number of edges in
a hexagon over a square provide bite in
more directions. Further, although the
Board’s finding could perhaps have
been clearer...." However, the CAFC did
not show any explicit passage in
Bowerman that indicates that more
directions of bite are better.
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CAFC
|
Dec. 21,
2004
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04-1075
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PTO
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In re Crish
|
The CAFC recognized "consisting of" as
a transitional phrase even though the
"consisting of" is in the body of the claim
after the phrase "comprising."
The fact that one of the authors on the
prior art references was the same as
one of the inventors apparently created
a presumption that the compound
created in the prior art reference was the
same as in the application, even though
that was not necessarily true.
Consequently, (although not worded as
such) the burden of proof shifted to the
Applicant, but the Applicant did not meet
that burden of proof.
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CAFC
|
January
6, 2005
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04-1009
|
|
Business Objects, S.A.,
v. Microstategy
|
In upholding a summary judgement of
non-infringement, the CAFC held that
when a claim recites that something is
associated with elements of a SELECT
statement, that element cannot be an
element that does not yet exist.
The claim recited, "associating a first
familiar name with a first returned value,
wherein the familiar name is also
associated with...a SELECT clause
describing..." I guess I am missing
something, because I would have
thought that "associating" and
"associated" are so broad that it does
not matter that the infringing device
could have had the association via an
intermediary layer. The CAFC states,
"Importantly, none of the filters
templates,...is tied to any specific table
of the physical database but instead is
associated with multiple schema tables."
However, the multiple schema tables are
eventually associated with the SELECT
statement, which I would have thought
creates an association between the
SELECT statement and the first familiar
name even if the first familiar name is
also associated with many other things. I
do not see anything in the claim that
specifies any item relationships, between
the elements being associated.
The CAFC interpreted "query engine
means for..." as a means plus function,
but the only analysis given is the
passage in the patent that describes the
corresponding structure. Clearly the
phrase "query engine" before the word
"means" and the function recited
afterwards were deemed not to convey
enough structure to remove the
recitation of the query engines from
being a means plus function. Perhaps,
the CAFC felt it was so clearly a
means-plus-function limitation that no
further explanation was needed.
Alternatively, finding a description of a
structure that is narrower than the
description of the function recited in the
claim made it a means plus function
claims.
This case also contains an example of a
broadening amendment that is still
eligible for doctrine of equivalents.
Specifically, "generating queries in a
predetermined query language" is
broader than "translating said user
query into a structured query language
(SQL) equivalent statement."
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CAFC
|
April 29,
2005
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04-1220
|
DCT
|
THE GILLETTE
COMPANY,
Plaintiff-Appellant, v.
ENERGIZER HOLDINGS,
INC.,
Defendant-Appellee.
|
The CAFC stated that the phrase "group
of" is open ended in contrast to the
language "group consisting of" in
Markush claims. The CAFC did not limit
the claims to 3 blades despite usage of
the terms "first," "second," and "third"
blades, but said that the infringing
device has two second blades. The
CAFC also did not construe the lack of
an explicit recitation of another
embodiment or the recitation of the three
blades in the summary of the invention
as limiting the scope of the claims to only
three blades. The CAFC interpreted the
phrase a plurality of blades as a
reference to having more than three
blades. The majority opinion is
refreshing, but the minority opinion is
scary, but is not inconsistent with many
prior cases. The minority opinion
construes the lack of an explicit
recitation of an embodiment with more
than 3 blades and the presence of a
recitation of 3 blades in the summary of
the invention as limiting the claims to
only three blades.
|
CAFC
|
January
11, 2005
|
04-1114,
-11255
|
DCT
|
BRUNO INDEPENDENT
LIVING AIDS, INC.,
Plaintiff-Appellant, v.
ACORN MOBILITY
SERVICES LTD. and
ACORN STAIRLIFTS,
INC.,
|
In upholding a decision of inequitable
conduct, the CAFC looked at the
statements made by the Applicant and
compared them to the reference. Since
the statements made could not have
been made were the concealed
reference of record (i.e., the feature
alleged to be new was in the concealed
reference), therefore the reference was
not cumulative to other references not
having that feature, and the CAFC found
a violation of rule 37 CFR 1.56. The
CAFC did not accept the defence that
the applicant was not aware of the
relevance of the concealed reference,
because of communications between the
general council and the patent council.
Also, the statements before the FDA
arguing the products similarity to the
concealed reference was taken into
account against the applicant. However,
it is not clear how much weight the
arguments before the FDA were given.
|
CAFC
|
May 6,
2005
|
04-1180
|
DCT
|
PC CONNECTOR
SOLUTIONS LLC,
Plaintiff-Appellant, v.
SMARTDISK
CORPORATION and
FUJI PHOTO FILM
U.S.A., INC.,
|
The CAFC stated that time dependent
terms such as "standard,"
"conventional," "traditional," or "normally"
are evaluated according to what is
conventional, customary, usual, or
normal at the time of the invention. More
importantly, although the CAFC stated
that they were not considering the issue
of doctrine of equivalence, the CAFC
essentially stated that the doctrine of
equivalence could not be used to
circumvent the time dependency
inherent in these terms. More precisely,
the CAFC stated, "Even if there were not
such a foreclosure, a finding of
equivalence in this case would effectively
vitiate the time-related limitation on the
I/O ports, if what is 'normally
connectible,' 'conventional,' 'traditionally
connectible,' and 'standard' at the time
of filing were deemed to be equivalent to
what is “normally connectible,”
“conventional,” “traditionally
connectible,” and “standard” at a future
date. As a matter of law, there can be no
infringement under the doctrine of
equivalents “[i]f a theory of equivalence
would vitiate a claim limitation.” Tronzo v.
Biomet, Inc., 156 F.3d 1154, 1160 (Fed.
Cir. 1998)."
|
CAFC
|
May 25,
2005
|
04-1370
|
PTO
|
IN RE KENNETH HARRIS
and JACQUELINE B.
WAHL
|
Mayne, 104 F.3d at 1341is relied upon
for the need to establish a prima facie
case of obviousness, and In re Dillon,
919 F.2d 688, 692 (Fed. Cir. 1990) (en
banc) is relied upon to show a shift in the
burden in the face of a prima facie case
of obviousness.
The prior art disclosed a broader range
of 5.0-14.0 and a narrower range of 5.5-
7.0 while the claim recited a range of 4.3-
5.3 for chromium. Also, regarding
tantalum the claimed range is only 4.35
to 4.8% (only a half of percent), which is
encompassed within the prior art range
of 3.0-7.0%, which is several time larger
than the claimed range. However, the
court was impressed by the fact that the
claimed range for tantalum is totally
encompassed by the prior art (citing
Peterson, 315 F.3d at 1330). The
CAFC seemed to be impressed by the
number other overlapping ranges. It is
not clear why that should have bearing
on the elements in which there may be a
discrepancy, or if it does have a
bearing. The CAFC and PTO found that
the small overlap between ranges is
enough to show "obviousness," despite
the recognition that according to
Peterson that a small range within a
large range is not necessarily obvious.
The use of the word "about" to broaden
the ends of the range further hurt the
applicants' arguments. Additionally, the
CAFC stated that unexpected results
need to cover the claimed range and
need to show more than just a greater
degree of improvement. The court
stated, "Thus, contrary to Harris’s
contention, Yoshinari’s preferred range
of 5.5 to 7.0 is not necessarily outside
the scope of 'about 5.3.'" The CAFc
stated that "The 32-43% increase in
stress-rupture life, however, does not
represent a “difference in kind” that is
required to show unexpected results.
See In re Huang, 100 F.3d 135, 139
(Fed. Cir. 1996) (holding that claimed
ranges must 'produce a new and
unexpected result which is different in
kind and not merely in degree from
results of the prior art')." The applicant
did not argue, and the CAFC does not
address, the lack of support within the
prior art for the PTO's rationale for
shifting the range.
|
CAFC
|
June 8,
2005
|
04-1437,
-1438, -1471
|
|
BOSS CONTROL, INC.
and 1217537 ONTARIO
LIMITED PARTNERSHIP,
Plaintiffs-Appellants, v.
BOMBARDIER INC. and
SPORTS CARS, INC. OF
HOUSTON (doing
business as Northwest
Honda),
Defendants-Cross
Appellants. Robert M.
Bowick
|
The claim only recites "interrupt" and
interrupt mode. However, the CAFC
read into the term "interrupt" a two stage
process in which the power is not
completely shut off based on statements
in the background, summary of the
invention, and preferred embodiment.
Although the specification never explicitly
defined the term "interrupt," the
background spoke about how the prior
art only had a shutoff mechanism. The
CAFC even changed the meaning of the
term interrupt mode, because the usage
in the claim was determined to be
inconsistent with the usage in the
specification.
|
CAFC
|
June17,
2005
|
04-1405
|
DCT
|
UPSHER-SMITH
LABORATORIES, INC.,
Plaintiff-Appellant, v.
PAMLAB, L.L.C.
(formerly Pan American
Laboratories, Inc.) and
PAN AMERICAN
LABORATORIES, L.L.C.,
Defendants-Appellees,
and METABOLITE
LABORATORIES, INC.,
Defendant.
|
A disclosure of optionally including
antioxidants anticipates a claim that
precludes antioxidants.
|
CAFC
|
July 12,
2005
|
03-1269,
-1286
|
DCT
|
Edward Philips v. AWH
Corporation HOPEMAN
BROTHERS, INC., and
LOFTON
CORPORATION,
|
The court stated, "Means-plus-function
claiming applies only to purely functional
limitations that do not provide the
structure that performs the recited
function," and conclude that the "Baffles"
were "not a means plus function
limitation, because it is not a purely
functional placeholder in which structure
is filled in by the specification."
The court gave a lengthy discussion of
claim construction. The court held that
claimed baffles do not need to be at a
right angle despite the lack any
disclosure in which the baffles were not
at right angles relying in-part on claim
differentiation to support their view. The
court also stated, "The fact that the
written description of the ’798 patent
sets forth multiple objectives to be
served by the baffles recited in the
claims confirms that the term “baffles”
should not be read restrictively to
require that the baffles in each case
serve all of the recited functions. We
have held that '[t]he fact that a patent
asserts that an invention achieves
several objectives does not require that
each of the claims be construed as
limited to structures that are capable of
achieving all of the objectives.' Liebel-
Flarsheim, 358."
|
CAFC
|
July 14,
2005
|
04-1306,
-1307
|
DCT
|
NORTH AMERICAN
CONTAINER, INC.,
Plaintiff-Appellant, v.
PLASTIPAK
PACKAGING, INC.,
AMERICAN BOTTLING
COMPANY, INC., CNC
CONTAINER, KRAFT
FOODS, INC., SHASTA
BEVERAGES, INC., THE
KROGER COMPANY,
and WIS-PAK
PLASTICS, INC., and
SILGAN PLASTICS
CORPORATION, and
THE CLOROX
COMPANY, and
RECKITT BENCKISER
INC., and BARTON
BRANDS, LTD., and
AMERICAN NATIONAL
CAN GROUP, INC., and
SUIZA FOODS
CORPORATION, and
COCA-COLA
BOTTLING, CO.
CONSOLIDATED, COCA-
COLA ENTERPRISES,
CONTINENTAL PET
TECHNOLOGIES, INC.,
OWENS-ILLINOIS, INC.,
OWENS-BROCKWAY
PLASTIC PRODUCTS,
INC., SOUTHEASTERN
CONTAINER, INC., and
WESTERN CONTAINER
CORPORATION, and
CONSTAR, INC., AB-
TEX BEVERAGE
CORPORATION, and
DR. PEPPER BOTTLING
COMPANY OF TEXAS,
and ALBERTSON’S INC.,
and
SAFEWAY, INC.,
SCHMALBACH-LUBECA
PLASTIC CONT AINERS
USA, INC., THE
CAMPBELL SOUP
COMPANY, KNOUSE
FOODS COOPERATIVE,
INC., and THE J.M.
SMUCKER COMPANY,
and UDV NORTH
AMERICA, INC., and
BCB USA CORP. (now
known as Cott
Beverages, Inc.), and
TROPICANA
PRODUCTS, INC., and
HEINZ USA, and
COLGATE-PALMOLIVE
COMPANY, and THE
PERRIER GROUP OF
AMERICA, INC., and
QUAKER OATS
COMPANY, and
DANONE
INTERNATIONAL
BRANDS, INC. and
GREAT BRANDS OF
EUROPE, INC.
|
The court stated, "as appellees note, we
have previously explained that limitations
may be construed to exclude a preferred
embodiment if the prosecution history
compels such a result. Elekta
Instruments S.A., 214 F.3d at 1308. For
the reasons explained above, in this
case, it does. As the district court
recognized, the fact that claims do not
cover certain embodiments disclosed in
the patent is compelled when narrowing
amendments are made in order to gain
allowance over prior art."
The CAFC also stated, "We apply the
recapture rule as a three-step process:
(1) first, we determine whether, and in
what respect, the reissue claims are
broader in scope than the original patent
claims; (2) next, we determine whether
the broader aspects of the reissue
claims relate to subject matter
surrendered in the original prosecution;
and (3) finally, we determine whether the
reissue claims were materially narrowed
in other respects, so that the claims may
not have been enlarged, and hence
avoid the recapture rule. Id. at 1371
(citations omitted)." Saving step 3 for last
is critical, because the court also stated,
"Moreover, that the reissue claims,
looked at as a whole, may be of
“intermediate scope” is irrelevant. As the
district court recognized, the recapture
rule is applied on a limitation-by-
limitation basis, and the applicant’s
deletion of the “generally convex”
limitation clearly broadened the “inner
wall” limitation. Thus, reissue claims 29-
42 are invalid for violating the rule
against recapture."
|
CAFC
|
Aug. 19,
2005
|
05-1098
|
DCT
|
AQUATEX INDUSTRIES,
INC., Plaintiff-Appellant,
v. TECHNICHE
SOLUTIONS
|
The CAFC interpret the claims as
precluding fibers that are not artificial
even though the claim is open ended.
The CAFC based their decision on the
lack of an example that used fibers that
are not artificial. Event though the
specification states that the composition
of the fibers is not critical, the CAFC
claims that they are not reading the
specification into the claims, but are just
reading the claims in light of the
specification, which is purportedly as one
of ordinary skill would understand the
claims after reading the specification. I
did not see what the distinction was
between reading the claims in view of the
specification and reading the
specification into the claims. In fact the
limitation read into the claims was never
even explicitly stated in the specification
as required.
The CAFC did not preclude the use of
the doctrine of equivalents even though
the claims narrowed by an amendment
adding "by evaporation" to the claims.
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