Federal
Circuit Affirms District Court Holding Of Invalidity
Under 35 U.S.C. § 101
In buySAFE, Inc. v. Google, Inc. (Appeal No. 2013-1575), the Federal
Circuit affirmed the district court’s judgment that buySAFE’s patent was
invalid because it covered a basic concept of providing secure online sales
transactions.
In 2011, buySafe sued Google for
infringement of U.S. Patent No. 7,644,019. Google moved for judgment on the
pleadings, arguing that the asserted claims were invalid under 35 U.S.C.
§101. Following the Supreme Court’s
ruling in AliceCorp. v. CLS Bank
International (2014), the Federal Circuit noted that laws of nature,
natural phenomena, and abstract ideas, no matter how “groundbreaking,
innovative or even brilliant” are not patentable because they are not a new
and useful process, machine, manufacture or composition of matter. The district court had held that the
asserted claims were patent ineligible under 35 U.S.C. §101 because they were
directed to a “well-known and widely understood concept” applied using
“conventional computer technology” without requiring “specific programming or
any particular machine”.
Following the approach in Alice Corp., it was, according the
Federal Circuit, “a straightforward matter” to find the claims invalid. The
claims were directed to the abstract idea of “creating a contractual
relationship” and the invocation of computers added no “inventive concept.” In
sum, the Federal Circuit held that method and machine-readable media claims
encoded to perform steps for guaranteeing a party’s performance of its online
transaction were not patentable subject matter.
Federal Circuit Affirms Summary
Judgment Of Laches But Reverses Summary Judgment Of Equitable Estoppel
In SCA Hygiene Products Aktiebolag v. First Quality Baby Prods., LLC (Appeal
No. 2013-1564), the Federal Circuit affirmed-in-part, reversed-in-part and
remanded the district court’s summary judgment that SCA’s infringement claims
were barred by laches and equitable estoppel.
SCA’s patent covers adult
incontinence products. On October 31, 2003, SCA sent First Quality a letter
suggesting that certain First Quality products might infringe SCA’s patent.
The two parties exchanged letters for eight months, and on July 7, 2004, SCA
requested ex parte reexamination
request of the patent. SCA did not
notify First Quality about the reexamination proceeding. On March 27, 2007,
the USPTO confirmed the patentability of all of the original claims and
issued several new claims added during reexamination. SCA immediately began
preparing to sue First Quality but did not file suit until August 2, 2010.
First Quality counterclaimed
for declaratory judgment of noninfringement and invalidity. After the
district court’s claim construction order, First Quality moved for partial
summary judgment of noninfringement and for summary judgment of laches and
equitable estoppel. The district court
granted First Quality’s motion for summary judgment as to laches and
equitable estoppel. SCA appealed.
The Federal Circuit reiterated
that laches is an equitable defense to patent infringement that may arise
when an accused infringer proves by a preponderance of evidence that a
patentee (1) unreasonably and inexcusably delayed filing an infringement suit
(2) to the material prejudice of the accused infringer. Delays exceeding six
years give rise to a presumption that the delay is unreasonable, inexcusable
and prejudicial. This presumption disappears if the patentee can present
evidence sufficient for a reasonable jury to conclude that the delay was
excusable or was not materially prejudicial.
SCA argued that the
reexamination proceedings precluded application of the laches presumptions
because the reexamination period should be excluded from the total delay. The
district court rejected that theory.
On appeal, the Federal Circuit
held that because SCA filed suit more than six years after first learning of First
Quality’s allegedly infringing activities, the laches presumptions applied, and
the district court properly concluded that SCA’s more than
six-year delay in filing suit warranted dismissal based on laches. However, in view of SCA and First Quality’s
limited interactions over the same time period, the Federal Circuit held that
there remained genuine issues of material fact pertaining to equitable
estoppel. The Federal Circuit therefore reversed the district court’s
ruling that SCA’s conduct created estoppel, since there was no affirmative
act, or failure to act, that First Quality could reasonably have relied upon.
Silence alone will not create an estoppel.
Federal Circuit Affirms Finding Of
Inequitable Conduct
In Am. Calcar, Inc. v. Am. Honda Motor Co., (Appeal No. 2013-1061),
the Federal Circuit affirmed the district court’s finding of inequitable
conduct.
Honda
had moved for a finding of inequitable conduct. Honda’s motion was based on
the actions of one of the three coinventors, Mr. Obradovich, who was the
person primarily responsible for preparing the patent application.
In
1996, Honda added a navigation system as an option for the Acura RL. At the
time, Calcar was publishing “Quick Tips” guides: booklets with condensed
information from a car’s owner’s manual. During the course of developing a
QuickTips guide for the 96RL, Mr. Obradovich drove the car and operated the
navigation system, and Calcar personnel took photographs of the navigation
system and owner’s manual. Subsequently, Mr. Obradovich began working on the
parent application that ultimately issued as the ’355 patent. The application
explicitly referred to the 96RL system as prior art, and Mr. Obradovich
acknowledged that the system was used as the basis of Calcar’s inventions.
Honda
alleged that Mr. Obradovich knew that the owner’s manual and photographs were
in Calcar’s possession and deliberately withheld them during prosecution.
Honda argued that the operational details that he did not disclose were
precisely those that were the claimed in the patents at issue.
After
a trial, the jury found one of the patents invalid and the other two patents not
invalid. Subsequently, the district court held all three patents
unenforceable and Calcar appealed.
While
the appeal was pending, the Federal Circuit had established
a revised and narrower test for inequitable conduct in Therasense, Inc. v. Becton, Dickinson & Co.,
649 F.3d 1276 (Fed. Cir. 2011) (en banc). In light of Therasense, the Federal Circuit remanded the
case to the district court to determine whether the patents would have been
granted “but for” the information that the applicant did not disclose,
following the test for materiality set forth in Therasense.
On
remand, the district court again found that the three patents were obtained
through inequitable conduct. The
district court found that “but for” the information about the prior art
withheld by Mr. Obradovich, the PTO would not have granted two of the
patents. It made further findings as
to all three patents regarding Mr. Obradovich’s specific intent to deceive
the PTO, concluding that the only reasonable inferences from the evidence
were that Mr. Obradovich knew that the prior art was material to his
invention and that he made a deliberate decision to withhold material
information. The district court qlso
found that evidence of Mr. Obradovich’s good faith did not overcome this
other evidence, nor did it create a reasonable inference that Mr. Obradovich may
have been merely negligent or grossly negligent.
The
Federal Circuit held that the district court did not clearly err in its
underlying factual findings of materiality and intent. The Federal Circuit
held further that the district court’s analysis was fully consistent with the
standards and tests set forth in Therasense, and therefore, did not abuse its
discretion in determining that the patents were unenforceable due
to inequitable conduct.
Judge Newman dissented.
Federal Circuit Affirms Summary
Judgment Of Noninfringement
In EMD Millipore Corp. v. AllPure Technologies, Inc. (Appeal No.
2014-1140), the Federal Circuit affirmed the district court’s summary
judgment of noninfringement.
Millipore’s patent claimed a
device for withdrawing or introducing a sample into a container of fluid
without contaminating the fluid and included “at least one removable,
replaceable transfer member.” The district court found that AllPure’s TAKEONE
device lacked the claimed “at least one removable, replaceable transfer
member” both literally and under the doctrine of equivalents.
The
district court found that during prosecution of the patent, the
applicant amended claim 1’s language, adding, inter alia, the requirement that the transfer member’s seal have
“a first end comprised of a bellows-shaped part sealingly attached to said
holder, and a second end comprising a self-sealing membrane portion
interiorly formed at an end of said bellows part.” The applicant stated that
the purpose of the amendment was to make claim 1 “allowable and
distinguishable over the cited references.”
On
appeal, the Federal Circuit held that there was no genuine issue of
material fact relating to whether the TAKEONE device literally contains “at
least one removable, replaceable transfer member,” and that the district
court properly found no literal infringement.
The
Federal Circuit held further that the district court should have barred
Millipore from asserting that the TAKEONE device contains an equivalent
transfer member due to prosecution history estoppel. Specifically, the applicant had added the
requirement that the seal have a first and second end with distinct elements,
and the amendment narrowed the seal limitation, which in turn narrowed the
transfer member limitation, giving rise to prosecution history estoppel. Thus, the Federal Circuit also affirmed
that there could be no infringement under the doctrine of equivalents. |