Cook Biotech Inc., et al. v. ACell, Inc., et al.
Claim Construction Based on Definition in Patent Incorporated by Reference.
At district court (N.D. Ind.), a jury found that ACell’s commercial product infringed U.S. Pat. No. 5,554,389 (the 389 patent) owned by Purdue Research Foundation (PRF) and licensed exclusively to Cook Biotech. On appeal, the CAFC reversed the judgment of infringement upon finding that there was no material factual dispute that the ACell product infringes the 389 patent, literally or under the doctrine of equivalents.
The technology of the 389 patent is related to a tissue graft composition comprising bladder submucosal tissue that can be implanted to replace or support damaged or diseased tissues. Such compositions are know as extracellular matrices or ECMs and are generally used as scaffolds for tissue reconstruction. Dr. Spievack of ACell and Dr. Badylack of Purdue had discussed Dr. Badylack’s work on graft compositions at a conference in which he had presented. Subsequently, the accused product was developed and related technology patented (in a number of patents the CAFC labeled as “Disputed Patents”) by ACell, notably following a rejected request for a license from Purdue.
The issues on appeal are 1) whether ACell infringed the 389 patent, literally or under the doctrine of equivalents, 2) whether Dr. Badylack is also an inventor of the “Disputed Patents”, and 3) whether there was unjust enrichment for the research and inventions disclosed in the Disputed Patents?
They Invented What? (No. 13)
U.S. Pat. No.6,637,447: Beerbrella.
We claim:
1. A combined beverage container and shading apparatus, comprising: a beverage container, for containing a beverage; a means for removably attaching the apparatus to the beverage container; a shaft, coupled to the means for removably attaching the apparatus, and extending vertically with respect to the beverage container; an umbrella, coupled to the shaft at a point above the means for removably attaching, so as to shade the beverage container, wherein the means for removably attaching comprises a clip provided to attach to the beverage container by means of spring action and friction.
2. The apparatus of claim 1, wherein the umbrella comprises a small umbrella approximately five to seven inches in diameter.
3. The apparatus of claim 1, wherein the umbrella comprises a small paper-like umbrella with balsa framing.
4. The apparatus of claim 1, wherein the umbrella comprises a solid plastic umbrella.
5. The apparatus of claim 1, wherein the umbrella comprises a cloth umbrella.
Monsanto Company v. Scruggs, et al.
Mississippi Farmer Cannot Save Seeds Claimed in Monsanto’s Roundup Ready Patents.
On appeal from the District Court for the Northern District of Mississippi, where Monsanto’s motions for summary judgment of patent invalidity and infringement (among other issues) were granted, Scruggs challenged an order granting Monsanto a permanent injunction. Although finding in favor of Monsanto, the CAFC vacated the injunction and remanded for consideration in light of eBay.
The technology at issue in Monsanto’s patents (U.S. Pat. Nos. 5,352,605; 5,164,316; 5,196,525; and 5,322,938) relates to Roundup Ready and Bollgard/Roundup Ready soybeans and cotton which is resistant to glyphosate herbicide (Roundup) and certain insects. Monsanto licenses the technology with certain restrictions, including 1) an exclusivity provision, 2) a no replant policy, 3) a no research policy, and 4) payment of a technology fee. However, Scruggs purchased the seeds from seed companies, never signed a licensing agreement, and retained the new generation of seeds after harvesting.
On appeal, Scruggs asserted a number of arguments including, among others, 1) the doctrine of patent exhaustion, 2) the existence of an implied license to use, and 3) patent misuse. Only these issues are summarized herein, although infringment, validity, and common law counterclaims were also discussed in the opinion.
Doctrine of Patent Exhaustion: Scruggs argued that it purchased the Monsanto seeds in an unrestricted sale and was therefore entitled to use the seeds in an unencumbered fashion. The first sale/patent exhaustion doctrine establishes that the unrestricted first sale by a patentee of his patented article exhausts his rights in the article. The CAFC held, however, that the doctrine is inapplicable to this case because the use of the seeds was conditioned on obtaining a license. Also, the new seeds grown from the original batch had never been sold, further preventing the application of the doctrine. “The fact that a patented technology can replicate itself does not give a purchaser the right to use replicated copies of the technology.
Implied License Affirmative Defense: The CAFC held that Scruggs had no implied license. In order to establish an implied license, the circumstances of the sale must plainly indicate that the grant of license should be inferred. Monsanto requires all licensees to place notice on seed bags providing notice of the patents, the fact that purchase of the seeds conveys no license, and that a license must be obtained before use. Furthermore, the sellers had no right to confer any license. A seller cannot confer broader rights via an implied license than it has been granted by the patent holder.
Antitrust/Patent Misuse: Scruggs specifically asserted that Monsanto’s restrictions on seed use (exclusivity provision, no replant policy, and technology fee payments) are illegal anticompetitive practices constituting patent misuse. The policy of the patent misuse doctrine is to prevent a patentee from using the patent to obtain market benefit beyond that which inures in the statutory patent right. However, conduct falling within the scope of patent protection includes limited use licensing. Additionally, no patent owner shall be deemed guilty of misuse by reason of his having refused to license or use any rights to the patent. The CAFC found all of Monsanto’s restrictions to be a valid exercise of rights under the patent laws.
Permanent Injunction: Although generally finding for Monsanto on all issues, the CAFC did vacate the trial court’s permanent injunction in favor of Monsanto and remanded for consideration in light of the Supreme Court’s recent opinion in eBay Inc. v. MercExchange, L.L.C. The eBay opinion requires courts to consider the standard four part test for permanent injunctions in patent cases and reversed the traditional rule that the court issue permanent injunctions against patent infringment absent exceptional circumstances.
Conoco v. Energy & Environmental International
Transitional Phrase ”Consisting Of” Is Not Absolute In The Exclusion of Unrecited Limitations.
Conoco originally brought suit against EEI alleging infringement of U.S. Patent Nos. 5,244,937 (the 937 patent) and 6,172,151 (the 151 patent). The case came to the CAFC from the District Court for the S.D. of Texas which held that EEI had literally infringed the 937 patent and infringed under the doctrine of equivalents the 151 patent. The CAFC affirmed the findings of infringement and upheld the ruling of the district court.
The technology of the patents relate to processes for making drag reducing agents (“DRA”) that are injected into oil and gas pipelines to reduce pumping friction. By reducing such friction, liquid may be pumped more efficiently. The DRAs of the invention are aqueous suspensions of high molecular weight polymers.
The issues on appeal were the district court’s construction of various claim terms, with one issue in particular relating to the transitional phrase “consisting of.” Specifically, EEI alleged that the Conoco’s use of “consisting of” in the claims limited the scope to exclude products performing only the recited steps of the patent “and nothing else.” EEI further contended that the district court erred by allowing the accused process’s suspension medium to include MIBK, a non-alcohol, in spite of the limitation that the suspending medium consist of water or a water-alcohol mixture.
The transitional phrase “consisting of” is a term of art in patent law with its own construction. See MPEP § 2111.03. The phrase “consisting of” signifies restriction and exclusion of unrecited steps or components. See MPEP § 2111.03. However, the CAFC notes that although “consisting of” is a term of restriction, the restriction is not absolute. For instance, the BPAI has interpreted “consisting of” to “close the claim to the inclusion of materials other than those recited except for impurities ordinarily associated therewith.” Additionally, the transitional phrase “consisting of” does not exclude additional components or steps that are unrelated to the invention.
In light of this construction, the CAFC recognized that MIBK is a common impurity found in industrial alcohols. Regardless of EEI’s assertions that MIBK was being purposefully added, “the intentional addition of a component does not change its status as an ‘impurity normally associated therewith.’” Interestingly, the court acknowledged that the purpose with which a material is added, e.g. if the MIBK had been added for a purpose related to the invention (prevent agglomeration, stability, etc.), effects a conclusion on whether the material is an impurity or not.
Based in part on findings that MIBK has little to no effect on the invention and could normally be found as an impurity to prevent a liquor tax from being applied (i.e. the use is unrelated to the purpose of the invention), the CAFC holds that the district court did not clearly err in the construction of the claims.
They Invented What? (No. 12)
U.S. Pat. No. 6,360,693: Animal toy.
JW Note: Many thanks to Brad Bower at Duke University for tipping me off to this one.
Abstract:
An apparatus for use as a toy by an animal, for example a dog, to either fetch carry or chew includes a main section with at least one protrusion extending therefrom that resembles a branch in appearance. The toy is formed of any of a number of materials including rubber, plastic, or wood including wood composites and is solid. It is either rigid or flexible. A flavoring (scent) is added, if desired. The toy is adapted to float by including a material therein that is lighter than water or it is adapted to glow in the dark, as desired, by the addition of a fluorescent material that is either included in the material from which the toy is made or the flourescent material is applied thereto as a coating. The toy may be segmented (i.e., notched) so as to break off into smaller segments, as is useful for smaller animals or, alternatively, to extend the life of the toy. Various textured surfaces including camouflage colorings are anticipated as are straight or curved main sections. The toy may be formed of any desired material, as described, so as to be edible by the animal.
Claims:
What is claimed is:
1. An animal toy, comprising: (a) a solid main section having a diameter and a longitudinal length and extending a predetermined distance along said longitudinal length; and (b) at least one protrusion attached at one end thereof said main section and extending a predetermined distance therefrom and wherein said at least one protrusion includes a second longitudinal axis that is not in parallel alignment with a first longitudinal axis of said solid main section; and wherein said animal toy is adapted to float on the water.
2. The animal toy of claim 1 wherein said main section is formed of a rubber.
3. The animal toy of claim 1 wherein said main section is formed of a plastic.
4. The animal toy of claim 1 wherein said main section includes a wood.
5. The animal toy of claim 1 wherein said main section includes cellulose.
6. The animal toy of claim 1 wherein said main section includes a flavoring.
To Specify a Further Limitation.
In the recent case of Pfizer, Inc., et al. v. Ranbaxy Laboratories, Limited, et al., a claim was found invalid for being improperly dependent in form. Pfizer had apparently stipulated at District Court that the claim at issue was a dependant claim and not an independent claim, thus (in hindsight) leaving itself open to the holding in this opinion. The claim at issue did reference another claim, but was drawn to different subject matter (a hemicalcium salt instead of a compound of claim 1). I believe this case does prompt the interesting question, therefore, of what actually differentiates an “independent” claim from a “dependent” claim under U.S. patent law?
Conveniently, dependent claims are defined at 35 U.S.C. Section 112, paragraph 4, which states:
“[A] claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”
Thus, a dependent claim has two elements: (1) the claim must contain reference to a previous claim, and (2) the claim must specify a further limitation to the previous claim.
The first of these elements is easily recognized . . . just a mere reference to another claim will suffice. But what does it mean to “specify a further limitation?” Does almost any reference coupled with additional subject matter act as a limitation, or can a claim actually reference another claim without providing a further limitation? For example, does a claim that states “An article prepared according to the process of Claim 1″ act to further limit the process of claim 1 by reciting a particular article made by the process, or does it instead recite independent subject matter, i.e. an article and not a process, and thus should be considered an independent claim?
I am of the view that almost any reference (there may be a few exceptions) to another claim results in the claim becoming dependent in form, regardless of whether the new claim is drawn to different subject matter. I see language drawn to different subject matter, but presented in such as fashion, as a further limitation of the independent claim. I believe the better practice is to write such claims in truly independent form, especially if it is the intent that the claims be viewed as such.
I know of some colleagues who disagree with this viewpoint, and feel that referencing another claim but reciting different subject matter makes the claim independent, in particular because they do not view the recitation of different subject matter as a limitation. Any other practitioners out there feel strongly about this topic one way or another? Thoughtful comments are welcomed.
There is Something Different About You . . . Did You Get a Haircut?
The few of you who actually have read this blog will notice a substantial change in appearance of the site as of today. After going through many different WordPress themes I finally decided on this one, called Regulus. In my opinion, it was the most aesthetically pleasing and user-friendly of the themes I’ve reviewed.
In any case, I think we’ll try it for a while and see if it sticks. If there are any strenuous objections to the new look, let me know!
KSR International Co. v. Teleflex, Inc., et al. – The Brief in Opposition.
The brief in opposition can be view here: Teleflex – Brief in Opposition
The reasons stated by Teleflex as to why the present case is not an appropriate one for the Supreme Court to re-examine the “well-settled” law of obviousness, and why the petition for review should be denied, are summarized as follows:
1. The Federal Circuit Has Not Abandoned The Supreme Court’s Precedents or Section 103.
Teleflex states that KSR is wrong in asserting that the decision of the Federal Circuit was in direct conflict with Supreme Court precedent and Section 103. First, Teleflex focused on the fact-intensive Graham test, having multiple prongs for analysis. Teleflex points out that under the specific fact situations of the Sakraida and Anderson’s-Black Rock cases cited by KSR, the courts used synergism to determine obviousness. It was further noted that the courts applied the synergism test while relying on Graham as laying out the framework for determining obviousness. However, the court never stated that synergism, notably a single-pronged test, superseded Graham.
Teleflex further asserts that Graham instructed that the injection of hindsight into the obviousness analysis must be avoided. The “teaching-suggestion-motivation” test is consistent with Graham and prevents such hindsight reconstruction by requiring a suggestion to combine prior art.
Furthermore, Teleflex cites another Supreme Court decision, United States v. Adams, 383 U.S. 39 (1966), decided in the same year as Graham. This case, and subsequent cases citing Adams, provide precedents on obviousness that are consistent with the Federal Circuit’s “suggestion-teaching-motivation” decisions. Teleflex argues that these cases effectively state that a patent will not be deemed invalid merely because it is made up of a combination of old elements, and to do so is contrary to Section 103.
Finally, Teleflex notes that KSR referenced motivation, suggestion and desirability to combine prior art as the proper test in lower court briefs.
JW Note: The arguments here really don’t seem that persuasive to me. The emphasis seems to be inappropriately placed on the single-prong vs. multi-prong nature of the conflicting tests. Also, Teleflex actually appears to argue that the synergism test is consistent with Graham . . . isn’t that more in line with KSR’s position? Instead, shouldn’t the focus be placed on the consistency of the “suggestion-teaching-motivation” test with Graham?
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