Anticipate This!™ | Patent and Trademark Law Blog

2006 Year-end CAFC Opinions.

Posted in Opinion Commentary by Jake Ward on January 1, 2007

JW Note:  Some notes relating to the CAFC opinions issued near the end of 2006.  Enjoy. 

December 29, 2006:  Ventana Medical Systems, Inc. v. Biogenex Laboratories, Inc. (Fed. Cir. 2006, 06-1074).  Finding that the district court erred in its claim construction, the CAFC vacated the judgment of noninfringement.  The technology at issue relates to automated methods and apparatuses for staining microscope slides.  The sole issue was the proper construction of the claim term “dispensing.”  The district court construed the “dispensing” claim limitation to require “direct dispensing.”  The CAFC held that this was an improper importation of claim terms.  Although the preferred embodiments contained a “direct dispensing” feature, the applicants were not required to claim this feature and, indeed, did not do so.

December 26, 2006:  Eli Lilly v. Zenith Goldline (Fed. Cir. 2006, 05-1396).  The technology at issue relates to olanzapine and use of the compound to treat schizophrenia.  In reponse to an In re Petering argument (A Species of the Anticipation Genus) the court held that the number of compounds actually disclosed by the cited reference numbered in the millions (including all proposed alternative substituents) and not a limited class of only “some 20 compounds.”  Thus, the CAFC affirmed the trial court holdings that the Lilly patent valid and infringed.

December 19, 2006:  In re Mary K. Hays (Fed. Cir. 2006, 06-1311), non-precedential.   The PTO Director apparently conceded that the BPAI erred in its anticipation determination, making this short opinion a slam-dunk to vacate and remand. 

December 18, 2006:  Plumtree Software, Inc. v. Datamize, LLC. (Fed. Cir. 2006, 06-1017).  The technology relates to a computer program that is used to create other computer programs, e.g. kiosks.  The court first opined on declaratory judgments.  A declaratory judgment requires that there be both (1) an explicit threat or other action by the patentee, which creates a reasonable apprehension on the part of the declaratory plaintiff that it will face an infringement suit, and (2) present activity which could constitute infringement or concrete steps taken with the intent to conduct such activity.  Next, the court opined on the on-sale bar.  First, the product must be the subject of a commercial sale or offer for sale.  Second, the invention must be ready for patenting.  The second condition is met by proof of reduction to practice before the critical date.  The CAFC concluded that the district court erred in granting summary judgment pursuant to § 102(b) because the record contains insufficient facts to determine whether the patented process was sold or offered for sale before the critical date.

December 13, 2006:  Planet Bingo, LLC, et al. v. Gametech International, Inc., et al. (Fed. Cir. 2006, 05-1476).  Planet Bingo is the exclusive licensee of patents claiming alternative methods of playing bingo by coupling numbers with additional “indicia” or “markings,” such as colors or shading patterns.  In finding no DOE infringement by Gametech’s “Rainbow Bingo” game, the CAFC focused on the claim term “predetermined” and noted that such a difference in timing between the games creates a difference of knowing the winning combination before the game starts or after the game starts.   

December 13, 2006:  DSU Medical Corporation, et al. v. JMS Co., LTD, et al. (Fed. Cir. 2006, 04-1620).   DSU sued JMS for direct infringement, inducement, and contributory infringement its patents claiming a guarded, winged-needle assembly. The technology reduces the risk of accidental needle-stick injuries.  The CAFC affirmed the trial court’s grant of summary judgment of non-infringement on combination of guard and needle assembly claims and on the open-shell configuration of the stand-alone claims.

December 8, 2006:  Sanofi-Synthelabo, et al. v. Apotex, Inc., et al. (Fed. Cir. 2006, 06-1613).   The CAFC affirmed a granting of a preliminary injunction in favor of Sanofi, the producer of Plavix®, or clopidogrel bisulfate, a platelet aggregation inhibiting agent used to reduce thrombotic events such as heart attacks and strokes.  First thought, this opinion is an example of an affirmed injunction in the post-Ebay legal landscape.  Second, an In re Petering analysis (see A Species of the Anticipation Genus) was performed in which the CAFC stated “there is no such clear “pattern of preferences” that serves to narrow the genus in [the cited claim] to a narrow class that includes clopidogrel bisulfate.”

December 8, 2006:  Thompson v. Microsoft Corporation (Fed. Cir. 2006, 06-1073).  Thompson argued essentially that Microsoft had stole his invention.  However, the court never addresses this, and punts the case away based on a lack of jurisdiciton.  “Thompson’s well-pleaded complaint does not establish that the right to relief necessarily depends on resolution of a substantial question of federal patent law. Thus, the district court’s jurisdiction does not “aris[e] under” section 1338.”  Also, a “defense on preemption grounds does not provide [the CAFC] with jurisdiction . . . .” 

November 22, 2006:  Amgen Inc. v. Hoechst Marion Roussel, Inc. (Fed. Cir. 2006, 05-1157o), order.  A combined petition for panel rehearing was denied.  In the original hearing of Amgen v. Aventis,  the phrase “therapeutically effective amount” was held to  have been incorrectly construed by the District Court.  Notably, a number of dissenting opinions were provided, revealing a general discontent with the present Markman-Cybor regime (no deference) for claim construction.

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