Federal Circuit Holds
That Principles Of Prosecution History Estoppel Apply To Design Patents
In Pacific
Coast Marine v. Malibu Boats (Appeal No. 2013-1199), the Federal
Circuit held, in an issue of first impression, that the principles of
prosecution history estoppel apply to design patents, reversing the district
court’s summary judgment of non-infringement because the accused infringing
design was not within the scope of the subject matter surrendered during
prosecution.
Pacific Coast is the assignee
of all rights of a U.S. design patent for an ornamental boat windshield
design. During prosecution, the
applicant submitted drawings with various embodiments of the claimed design
with different vent hole configurations. The
examiner determined that the multiple embodiments represented five "patentably distinct groups of designs" and issued a
restriction requirement, identifying the five distinct groups of designs as
windshields with:(1) four circular holes and a hatch; (2) four circular or
square holes and no hatch; (3) no holes and a hatch; (4) no holes and no
hatch; and (5) two oval or rectangular holes and a hatch. The applicant was
required to elect a single group for the pending application. In response,
the applicant elected "Group I, Embodiment 1," depicting four vent
holes and a hatch. The accused
infringing design was in a boat windshield with three trapezoidal holes on
the corner post.
Pacific Coast brought suit
against Malibu Boats, alleging infringement of its design patent protecting a
marine windshield with four holes in the corner post and colorable imitations
thereof. The district court granted
Malibu Boats’ motion for summary judgment of non-infringement of the accused
designs having a three-hole configuration, finding that prosecution history
estoppel barred the infringement claim.
On appeal, the Federal Circuit
concluded that the principles of prosecution history estoppel apply to design
patents as well as utility patents, which may be infringed both literally and
under the doctrine of equivalent. The
Federal Circuit determined: (1) whether there was a
surrender; (2) whether it was for reasons of patentability; and (3)
whether the accused design is within the scope of the surrender.
(1) The
Federal Circuit concluded that there was a surrender of claim scope during
prosecution and held that prosecution history estoppel is not limited to
narrowing amendments, but extends as well to claim surrender. By removing
broad claim language referring to alternate configurations and cancelling the
individual figures showing the unelected embodiments, the applicant narrowed
the scope of his original application to windshields with four-hole, and
surrendered subject matter of two holes or no holes embodiment;
(2) The
Federal Circuit concluded that claim scope was surrendered in order to secure
the patent, as required by the Supreme Court’s decision in Festo, in which the Court has held that “estoppel
arises when an amendment is made to secure the patent and the amendment
narrows the patent’s scope”, and though that, in the design patent
context, the surrender resulting from a restriction requirement invokes
prosecution history estoppel if the surrender was necessary, as in Festo, “to secure the patent.”
(3) As
to the final question, the Federal Circuit noted that prosecution history
estoppel only bars an infringement claim if the accused design fell within
the scope of the surrendered subject matter. In the present case, the surrendered designs included windshields with
two holes or no holes to secure the patent in suit claiming four-hole,
however, the applicant neither submitted nor surrendered any three-hole
design, which corresponds to the accused design.
The Federal Circuit also found
that it need not decide whether the scope of the surrender is measured by the
colorable imitation standard, since the defendant here did not argue that the
scope of the surrendered two-hole embodiment extended to the three-hole
embodiment because the three-hole embodiment was not colorably different from the two-hole embodiment.
Since the patentee here did
not argue that the accused design was within the scope of the surrendered
two-hole embodiment, no presumption of prosecution history estoppel could
arise. Therefore, the Federal Circuit held that prosecution history estoppel
principles do not bar Pacific Coast’s infringement claim, and remanded for
further proceedings.
Federal
Circuit Partially Affirms District Court Ruling On Timeliness For Requesting
Reconsideration Of Patent Term Adjustment Determination
In Novartis AG v. Lee (Appeal
No. 2013-1160, -1179), the Federal Circuit affirmed the district court’s
ruling on timeliness as to the claims at issue, agreeing with the district
court’s interpretation of 35 U.S.C § 154(b)(3) and (b)(4) and partly reversed
the judgment as to patent term adjustment of the PTO.
Novartis filed suits that
challenged the determinations by the PTO of how much time to add, under 35
U.S.C. § 154(b), to the otherwise-applicable term of various Novartis
patents. Of the eighteen patents before the Court, the district court
dismissed Novartis’s claims regarding fifteen as untimely asserted. For the
other three, the court rejected the PTO’s construction of the statutory
provision that governs patent term adjustment.
For the claims dismissed as
untimely, the Court held that the applicable limitations rule was the 180-day
rule of § 154(b)(4) and that nineteen of Novartis’s
claims were filed too late under that rule.
It is undisputed that for the
fifteen patents, Novartis did not file suit within 180 days of denial of
reconsideration. However, for these patents, Novartis appealed the district
court’s dismissal of its claims as untimely under the pre-2013 version of 35
U.S.C. § 154(b)(3) & § 154(4)(A), by contending
that the 180-day period is inapplicable to its challenges to the final patent
term adjustment determinations, because the Director did not make those
determinations under paragraph (b)(3), which addresses only the provisional
adjustment announced upon allowance of claims.
The Federal Circuit found this
interpretation ultimately unreasonable, because clause (b)(3)(B)(ii)
and subparagraph (b)(3)(D), both of which plainly cover the final adjustment
announced at issuance, not just a provisional adjustment announced at allowance. Although the statutory phrasing provides a
starting point for Novartis’s argument, by emphasizing the judicial
obligation “to make sense rather than nonsense out of” the statute as a
whole, the Federal Circuit affirmed that the only reasonable construction is
that the § 154 (b)(3)(B)(i) command regarding
transmittal with a notice of allowance is itself implicitly limited to
determinations that can be transmitted at that time.
As to Novartis’s timely
asserted claims, the Federal Circuit concluded that the PTO was partly
correct and partly incorrect in its interpretation of § 154(b)(1)(B). Notably, Novartis challenged two PTO
interpretations of the provision of 35 U.S.C. § 154(b)(1)(B)(i).
The Federal Circuit agreed with one of the PTO’s interpretation, that no
adjustment time is available for any time in continued examination, even if
the continued examination was initiated more than three calendar years after
the application’s filing. The Federal
Circuit rejected another view of the PTO and emphasized that the time from
allowance to issuance undisputedly would count toward the PTO’s three-year
allotment in a case not involving a continued examination.
Therefore, the Federal Circuit
affirmed the dismissal of Novartis’s claims with respect to fifteen patents
as untimely, partly reversed the judgment as to patent term adjustment for
three patents, and remanded for redetermination of the proper adjustments in
accordance with this opinion.
Federal Circuit Affirms Invalidity Of
Patent As Anticipated Due To Failure To Properly Claim Priority
In Medtronic CoreValve LLC v. Edwards Lifesciences Corp. (Appeal No. 2013-1117), the Federal Circuit affirmed the district
court’s judgment of invalidity of the asserted claims as anticipated, by
agreeing with the district court’s determination of the priority date of the
patent at issue.
Medtronic sued Edwards for
infringement of certain claims of its patent entitled “Prosthetic Valve for
Transluminal Delivery”. The patent at
issue descends from a number of United States, international (PCT/FR), and French patent applications, notably a
French Application filed on October 31, 2000 and an International Application
filed on October 19, 2001. Edwards asserted
that the patent’s priority chain suffered from several defects for failure to
comply with the requirements of 35 U.S.C. §§ 119 and 120 which limited the
priority date of the Asserted Claims to no earlier than April 10, 2003, the
date on which a U.S. Patent Application Serial was filed, and thus moved to
invalidate the Asserted Claims on summary judgment under 35 U.S.C. § 102 with
earlier filed French and International Applications. Medtronic filed a cross-motion for summary
judgment on the priority date issue, contending that the priority chain of the '281 patent suffered from no
defects and that the Asserted Claims are entitled to a priority date of
October 31, 2000, the filing date of French Application.
The district court granted
Edwards’s motion and denied Medtronic’s cross-motion. With respect to
priority, the district court found that the patent at issue was not entitled
to a priority date earlier than April 10, 2003 because it was neither in
compliance with 35 U.S.C. § 119 to claim the benefit of the October 31, 2000
filing date of French Application, nor in compliance with 35 U.S.C. § 120 to
claim the benefit of the October 19, 2001 filing date of the International (PCT/FR) Application.
The Federal Circuit agreed
with the district court that because several intermediate U.S. patent applications
failed to specifically reference the earlier filed applications in the priority
chain, the patent at issue was not entitled to claim the priority date
of the International Application under § 120.
Consequently, the Federal Circuit
found that the district court was correct to limit the priority date of the
patent to no earlier than April 10, 2003 and thereafter find the Asserted
Claims invalid as anticipated and thus affirmed the judgment of the district
court.
Federal Circuit Affirms District Court’s Summary Judgment
of Non-Infringement
In Nazomi Communications, Inc. v. Nokia Corporation (Appeal
No. 2013-1165), the Federal Circuit affirmed the district court’s grant
of summary judgment of non-infringement.
Nazomi’s patents relate to a central processing unit (CPU)
capable of processing register-based and stack-based instructions. In February 2010, Nazomi filed a complaint against various technology
companies, including Western Digital Corporation and Sling Media, Inc.,
alleging infringement of its patents. In July 2012, Western and Sling filed a
motion for summary judgment contending that the claims should be construed to
require that the device perform the claimed functions itself, and that the
accused devices did not infringe the asserted claims because they include
only the necessary hardware but not the necessary software.
In opposing summary judgment, Nazomi argued that the claims describe only the hardware
component to perform the claimed functionalities and the accused products
infringed based on the presence of the hardware alone, even without the
activation of the necessary software.
The district court granted
Western and Sling’s motion for summary judgment of noninfringement and found that the claimed apparatus must itself be capable of performing the
claimed functions, and construed that the asserted claims require a hardware
and software combination capable of processing both register-based and
stack-based instructions. Without the
enabling software, the physical presence of the necessary hardware alone
could not process stack-based instructions.
The Federal Circuit agreed
with the district court that the claims are properly construed as claiming an
apparatus comprising a combination of hardware and software capable of
practicing the claim limitations. The
claims recite a CPU that can perform particular functions, namely, the
processing of both register-based and stack-based instructions. Since hardware cannot meet these
limitations in the absence of enabling software, the claims are properly construed
as claiming an apparatus comprising a combination of hardware and software
capable of practicing the claim limitations. Furthermore, the Court noted that the claims do not cover hardware
that contemplates an environment where it could be combined with software,
but rather require a hardware-software combination that must perform the
described functions.
The Federal Circuit therefore affirmed the district
court’s findings of non-infringement.
Federal Circuit Vacates Contempt Order And Remands For Claim
Construction
In Proveris Scientific Corp. v. Innovasystems, Inc. (Appeal
No. 2013-1166, 1190), the Federal Circuit vacated the district court contempt
order and remanded for claim construction and renewed contempt proceedings.
Proveris’s patent relates to a mechanism for evaluating aerosol spray plumes which
involves triggering a spray plume and collecting data on the plume via an
illumination device and an imaging device. In 2005, Proveris filed a patent infringement lawsuit against Innova.
After a permanent injunction granted by the district court, Innova modified the initially accused product and
contended that the significant modification renders the newly accused product
non-infringing, because the preamble of the concerned claim of the asserted
patent specifies that the image data may be captured “at a predetermined
instant in time”, while the newly accused product allowed a user to identify
what range of images he or she wanted to analyze after activating the
spray plume. Proveris disagreed with Innova’s interpretation of that claim language and filed
a contempt motion.
The district court would not
construe the concerned claim or import a limitation from the preamble of said
claim, because Innova could have raised claim
construction issues in the underlying infringement action. On the merits, the
district court entered a contempt order against Innova,
thereby implicitly finding that the newly accused product was not more than colorably different from the infringing initially accused
product and that it infringed the asserted patent.
The Federal Circuit, reasoning
that there was insufficient information on the record to resolve the proper
construction of disputed language within Claim 3, remanded the case to the district court to
determine the proper construction of the disputed claim language and
determination whether the newly accused product infringes Claim 3 and
therefore constitutes a violation of the injunction. |
