Archive for March, 2010

Save the Funk Brothers!

March 30, 2010 Leave a comment

With the recent advent of cases exploring the scope of patentable subject matter under 35 USC Sec. 101, an old, potentially forgotten Supreme Court case has received some glorious attention.  Unfortunately, its exposure to the limelight has not been very flattering.

Funk Brothers Seed Co. v. Kalo Inoculant Co. is oft-cited by opponents of a very broad scope of patentable subject matter because it has a great money quote:

The qualities [of the invention at issue] are the work of nature. Those qualities are, of course, not patentable. For patents cannot issue for the discovery of the phenomena of nature. (333 U.S. 130) (emphasis added)

Yesterday’s decision in Association for Molecular Pathology v. USPTO (the Myriad case), striking down patents claiming isolated DNA sequences, cited to exactly this phrase.  (See Myriad at 109).  Briefs in the Bilski v. Kappos case (among others) did the same.

Unfortunately, reliance on this quote as a holding against a broad scope of patentable subject matter goes to the heart of a problem that the Federal Circuit has dubbed the “cite bite”: “the great one liner – often without regard to whether the cited or quoted case has a holding that supports the position of the advocate.”  (See extended comments by Hal Wegner here, ppg. 49-51).

Citing to Funk Bros. for its alleged holding regarding patentable subject matter is a classic cite bite because the Funk Bros. court was actually addressing the question of whether the claims at issue recited an “invention or discovery” under 35 USC 31:

Petitioner filed a counterclaim asking for a declaratory judgment that the entire patent be adjudged invalid.  The District Court held the product claims invalid for want of invention, and dismissed the complaint. It also dismissed the counterclaim. Both parties appealed. The Circuit Court of Appeals reversed, holding that the product claims were valid and infringed and that the counterclaim should not have been dismissed. 161 F.2d 981. The question of validity is the only question presented by this petition for certiorari. (333 U.S. 128) (emphasis added).

As noted in this quote, the issue in Funk Bros. crystallized as whether the patent-at-issue was invalid for “want of invention,” not whether the claimed invention lacked patentable subject matter.

To be sure, Funk Bros. contains some great patentable-subject-matter language:

The qualities of these bacteria, like the heat of the sun, electricity, or the qualities of metals, are part of the storehouse of knowledge of all men. They are manifestations of laws of nature, free to all men and reserved exclusively to none. He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end. (333 U.S. 130) (emphasis added).

However, this language is dicta in the purest sense; Justice Douglas was waxing eloquent, as he so often did.  But Justice Douglas then got to the point:

[W]e think that that aggregation of species fell short of invention within the meaning of the patent statutes…[A] product must be more than new and useful to be patented; it must also satisfy the requirements of invention or discovery. (333 U.S. 131).

And what did it mean to “fall short of invention” in the Patent Act as it stood in 1948?  How can we tell that this case was really directed to the concept of  obviousness, and not to patentable subject matter?

First, we can look to the language of Funk Bros.: the “product must be more than new and useful…it must also satisfy the requirements of invention or discovery.”  That recitation is a strong parallel to today’s common understanding that an invention under the Patent Act must be new, useful, and nonobvious.  As well, former 35 U.S.C. Sec. 31 began with the following language:

Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, not known or used by others in this country, before his invention or discovery thereof,…

In other words, former Section 31 included language directed to the concept of “invent[ion] or discover[y]” and language directed to the types of patentable subject matter (“art, machine, manufacture, or composition of matter”); Funk Bros. was clearly directed to the former, and not the latter.

Second, if there remained any doubt, the supporting citation for the concept of “invention or discovery” is to “Cuno Engineering Corp. v. Automatic Devices Corp., 314 U. S. 84, 314 U. S. 90-91, and cases cited; 35 U.S.C. § 31.”  (333 U.S. 132).

The Cuno citation goes right to the classic statements of obviousness with which all patent attorneys should be familiar: an invention is obvious when it requires no more than the application of routine skill in the art.

Under the statute, 35 U.S.C. § 31, R.S. § 4886, the device must not only be “new and useful,” it must also be an “invention” or “discovery.” Thompson v. Boisselier, 114 U. S. 1, 114 U. S. 11. Since 52 U. S. 267, decided in 1851, it has been recognized that, if an improvement is to obtain the privileged position of a patent, more ingenuity must be involved than the work of a mechanic skilled in the art. Hicks v. Kelsey, 18 Wall. 670; Slawson v. Grand Street R. Co., 107 U. S. 649; Phillips v. Detroit, 111 U. S. 604; Morris v. McMillin, 112 U. S. 244; Saranac Automatic Machine Corp. v. Wirebounds Patents Co., 282 U.S. 704; Honolulu Oil Corp. v. Halliburton, 306 U. S. 550. “Perfection of workmanship, however much it may increase the convenience, extend the use, or diminish expense, is not patentable.” Reckendorfer v. Faber, 92 U. S. 347. The principle of the Hotchkiss case applies to the adaptation or combination of old or well known devices for new uses. Phillips v. Detroit, supra; Concrete Appliances Co. v. Gomery, supra; Powers-Kennedy Contracting Corp. v. Concrete Mixing & Conveying Co., supra; Electric Cable Joint Co. v. Brooklyn Edison Co., 292 U. S. 69; Altoona Publix Theaters, Inc. v. American Tri-Ergon Corp., supra; Textile Machine Works v. Louis Hirsch Textile Machines, Inc., 302 U. S. 490; Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U. S. 350. That is to say, the new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling. (emphasis added).

By using the technique of a “cite bite,” Judge Sweet missed this in deciding the Myriad case.

Ironically, Justice Frankfurter, concurring in Funk Bros., foresaw exactly such mischief as Justice’s Douglas opinion would bring:

It only confuses the issue, however, to introduce such terms as “the work of nature” and the “laws of nature.”  For these are vague and malleable terms infected with too much ambiguity and equivocation. Everything that happens may be deemed “the work of nature,” and any patentable composite exemplifies in its properties “the laws of nature.” Arguments drawn from such terms for ascertaining patentability could fairly be employed to challenge almost every patent. On the other hand, the suggestion that, “if there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end” may readily validate Bond’s claim….  Surely the Court does not mean unwittingly to pass on the patentability of such products by formulating criteria by which future issues of patentability may be prejudged. In finding Bond’s patent invalid, I have tried to avoid a formulation which, while it would in fact justify bond’s patent, would lay the basis for denying patentability to a large area within existing patent legislation. (emphasis added).

Unfortunately, Judge Sweet, in deciding the Myriad case, fell victim to the ambiguity of Douglas’s language, just as Justice Frankfurter predicted would someday occur.  Judge Sweet’s citation to Funk Bros. missed the holding of Justice Douglas’s opinion and ignored the underlying concepts of obviousness derived from Cuno, thus rendering a decision which would “lay the basis for denying patentability to a large area within existing patent legislation.”

If the Federal Circuit is paying attention, Judge Sweet’s decision should not last.

More commentary can be found here:

Genomics Law Report

IPWatchdog (by Eric Guttag)


ars technica

New York Times

[Updated to add links to Kalo and Cuno.  Thanks Steven Nipper for the reminder.  Steven has  a great compilation of Supreme Court patent cases listed at his site (though I didn’t link to his versions here)]


Not a Sweet Result for Myriad Genetics

March 29, 2010 2 comments

In Association for Molecular Pathology v. U.S. Patent and Trademark Office [PDF], Judge Robert Sweet of the Southern District of New York was asked to rule certain claims from Myriad Genetics’s patents invalid on summary judgment.   The propriety of issuing patents to genes is often a subject of lively public debate, but the Patent and Trademark Office has had a longstanding policy of issuing patents directed to isolated and purified genes.  Here, various entities (including (and the ACLU and PubPat) sought to challenge this policy against the backdrop of what they feel is an egregious example of gene patenting.

The court gave an impressively detailed recitation of the interested parties, and of the genetic and scientific basis for using the BRCA gene and its alleles (subtypes) in diagnosing various types of cancer.   I will not repeat that background here (it is approximately 60 pages) but, in short, Myriad owns patents directed to isolated BRCA DNA sequences, and to methods of using the BRCA sequences in detecting a predisposition to breast and ovarian cancers.

Representative composition and method claims are presented below:

An isolated DNA coding for a BRCA1 polypeptide, said polypeptide having the amino acid sequence set forth in SEQ ID NO:2.  (Claim 1 of U.S. Patent No. 5,747,282).

A method for detecting a germline alteration in a BRCA1 gene, said alteration selected from a group consisting of the alterations set forth in Tables 12A, 14, 18, or 19 in a human which comprises analyzing a sequence of a BRCA1 gene or BRCA1 RNA from a human sample or analyzing a sequence of BRCA1 cDNA made from mRNA from said human sample with the proviso that said germline alteration is not a deletion of 4 nucleotides corresponding to base numbers 4184-4187 of SEQ ID NO:1.  (Claim 1 of U.S. Patent No. 5,709,999).

In claim construction, the court quite rightly construed “DNA” as a real, tangible chemical compound, rather than as a pure sequence of information (such as a string of letters typed on a piece of paper).  The court also construed “isolated DNA” (a segment of nucleotides existing free of cellular components), and “BRCA1” and “BRCA2” (genes having alleles which cause susceptibility to breast and ovarian cancer).

Legally, Judge Sweet tested whether the subject matter of the claims is patentable under 35 USC Sec. 101.  Judge Sweet relied, appropriately, on a long line of Supreme Court cases affirming the patentability of various inventions derived from nature.  Diamond v. Chakrabarty, for example, stated that “the patent laws [should] be given wide scope” in upholding the patentability of genetically modified bacteria as “manufactures” or “compositions of matter.”  However, the scope of patentable subject matter is not unlimited, and because scientific principles and laws of nature “define the relationship of man with his environment [they] ought not to be the subject of exclusive rights to any one person.”  In re Meyer (CCPA 1982) (citing Leroy v. Tatham (1852)).

This opinion takes problematic steps, however, in reaching its holding that isolated DNA (as recited in claim 1, above) is not patentable subject matter.

First, Judge Sweet appears to stretch the “laws of nature” rule beyond the point at which it breaks.  The Supreme Court has often said that phenomena of nature are not patentable, while still allowing certain constructs derived from nature to remain patentable (such as genetically engineered bacteria).  However, it should be apparent that phenomena of nature (such as the laws of gravity, or equations of physics) are quite different from physical entities that could not have existed before someone constructed them in a laboratory, and which are derived from phenomena of nature (such as the information-encoding function of DNA).

Second, Judge Sweet takes a wrong turn when he begins his legal reasoning with a cite to Justice Breyer’s dissent from the denial of certiorari in Lab Corp. v. Metabolite Labs. [PDF] By its very nature, Justice Breyer’s dissent, though expressing an admirable concept (“too much patent protection can impede rather than promote the ‘Progress of Science and useful Arts'”) is not binding law, or even the appropriate starting point for a recitation of binding law.  Judge Sweet compounds this error by falling prey to the dreaded “cite bite”; that is, citing a case for an attractive statement that is neither its holding nor an accurate reflection of the important legal issue (for background on the perils of the cite bite, see, for example, these comments by Chief Judge Michel, at pg. 7; and these comments by Hal Wegner).  Here, Judge Sweet cites Funk Bros. Seed Co. v. Kalo Inoculant Co. for the proposition that “manifestations of laws of nature [are] free to all men and reserved exclusively to none.”  However, Funk Bros. is not widely understood to be a case about patentable subject matter; it appears, rather, to be a case about the obviousness statute in the pre-1952 Patent Act.  Thus, it should be no help to Judge Sweet’s resolution of this case, and casts a shadow over the solidity of his reasoning.

Although Judge Sweet gets on the right track when he states that the test under Sec. 101 is a) utility [conceded here], coupled with b) statutory subject matter, one cannot help but feel that Judge Sweet was swayed by possibly erroneous legal principles, such as the one from Funk Bros. (cited again on ppg. 109 and 135).

Judge Sweet addressed the statutory subject matter question by asking whether the invention recited in the claims is “a fundamentally new product”; tested by whether the manmade invention “possesses a new or distinctive form, quality, or property” compared to the naturally-occurring article.  Here, Judge Sweet performed essentially the opposite of the trick that is commonly utilized by the Supreme Court.  At the High Court, when deciding when something is a longstanding and well-recognized fundamental right, it can quite easily be shown that something is NOT a fundamental right by defining the right narrowly.  For example, “the right to marry a loved one” could be a fundamental right, being deeply rooted in American history; the “right to marry a loved one of the same sex” would not be a fundamental right, not being deeply rooted.  It’s all in the definition.

Here, Judge Sweet worked the trick by defining the claimed material’s “fundamental nature” broadly, so as to make it more difficult for the alleged invention to be different from its natural form.  For example, Judge Sweet recites many of the ways that cDNA made in the laboratory is different from chromosomal DNA found in a cell (see, e.g., Opinion at pg. 42).  But Judge Sweet then ignores these differences when he wants to discuss what DNA “is.”  (See, e.g., Opinion at pg. 132; “a nucleotide sequence” or information).  Thus, rather than an isolated DNA molecule being quite different from DNA housed in the nucleus of a cell (which it obviously is), isolated DNA becomes exactly the same as DNA in a nucleus, because in each case the DNA’s fundamental nature is to be a nucleotide sequence, or information carrier.  Since it is undifferentiated from chromosomal DNA on this broad description of its fundamental nature, the isolated DNA of the claims cannot be patentable subject matter.

I think Judge Sweet is on much firmer ground in ruling Myriad’s method claims unpatentable as being mental processes of “analyzing” or “comparing,” and not requiring something more than abstract thought, so I will not go into that reasoning here.

Suffice to say, as I touched on above, I think Judge Sweet’s reasoning in this case leaves something to be desired.  It was clear from the tone of the background discussion how the case would come out, and it only remained to be seen what path would be taken to the outcome.  It would surprise me not at all to see Myriad appeal this case and the Federal Circuit reverse the district court.

For other discussion of this case, please see:

The New York Times

The Genomics Law Report

The Prior Art blog

Categories: 35 USC 101 Tags: , ,

So You Think You Had A Bad Week

March 26, 2010 Leave a comment

Applera Corporation (part of the Applied Biosystems Group, if I recall correctly, which is in turn part of Life Technologies) has had a tough couple days.  They managed to go 0-for-2 at the Federal Circuit*, having one district court loss affirmed, and another district court victory remanded.  Alas.

On Thursday, Applera’s loss to Illumina in the Northern District of California was affirmed (though, to be fair, Illumina lost a couple issues below as well).  In that case,  a jury held against Applera on its claims of patent ownership and patent invalidity.  The district court judge denied Applera’s motions for judgment as a matter of law, and the Federal Circuit affirmed those denials.

 On Friday, Applera’s victory over Enzo in the District of Connecticut was reversed and remanded for further proceedings (though, to be fair, Applera prevailed on separate anticipation and noninfringement arguments).  In that case, the district court granted summary judgment in favor of Applera on its motions that four of the patents-in-suit are either invalid (indefinite or anticipated) or not infringed.  Though Applera managed to prevail at the Federal Circuit on one defense of anticipation and one defense of noninfringement, it will be going back to Connecticut for further hearings on two patents found not invalid for indefiniteness.

So, Happy Friday!

*caveat: because so often there are many claims at issue in patent infringement cases, it’s hard to prevail completely in any given case.  On the other hand, it’s also kind of a bummer to get two decisions in two days that either send you back to the district court for more proceedings, or affirm an earlier loss.

Categories: CAFC Tags: , ,

Ariad v. Eli Lilly – The Written Description Requirement

March 23, 2010 Leave a comment

Monday, March 22, 2010, the Court of Appeals for the Federal Circuit issued its long-awaited en banc opinion in Ariad Pharms. v. Eli Lilly & Co. (No. 08-1248).  In that opinion, the Court confirmed that 35 USC Sec. 112, para. 1 contains a written description requirement that must be satisfied by a patent applicant separate from the enablement requirement of that same section.

A copy of the opinion is here (PDF).  I’ll have more later.  Until then, please contemplate the relevant paragraph of 35 USC 112:

35 U.S.C. 112 Specification.

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. [emphasis added]

Categories: CAFC Tags: , ,

PubPat hits Adobe with the False Marking stick

March 10, 2010 3 comments

On March 9, the Public Patent Foundation (PubPat) sued Adobe Systems, Inc. in the U.S. District Court for the Southern District of New York over false marking of various Adobe Reader products.  I think this case is especially interesting because I noticed Adobe’s false marking about two weeks ago on the newest version of Reader, and wondered then if the marking occurred on earlier versions, as well.

PubPat says yes.  In the Complaint, PubPat shows examples of false marking for Adobe Reader versions 7, 8, and 9 (see pp. 5-9).  What may differentiate this false marking case from many others is the presence of multiple mis-marked versions of the same product.

Typically, it seems like proving intent to mis-mark is going to be the highest hurdle false marking plaintiffs will have to traverse.  Usually, there is only one product marked falsely, so the mis-marking could have been unintentional originally and unnoticed continually.  (Courts could make this hurdle lower by implementing a “knew or should have known” intent standard, but that’s a discussion for another day).

Here, however, you have multiple mis-marked versions of the same product, and the markings are not identical.  In other words, someone apparently went through and made a conscious choice regarding each patent that was marked onto each version of Reader.  As well, the newer versions of Reader had brand new patents marked onto them at the same time older patents, either unexpired or inapplicable, were allowed to remain.

One complication that is faced by PubPat is the presence of another lawsuit regarding false marking of the same product.  In the Complaint, PubPat notes:

On Dec. 30, 2009, Defendant was sued, under 35 U.S.C. §292, by an entity named San Francisco Technology Inc. (See San Francisco Technology Inc. v. Adobe Systems Inc., et al., No. C-09-06083 (N.D. Cal., Dec. 30, 2009) (the “SF Tech.” suit)).

The SF Tech. suit alleges, inter alia, that Defendant violates §292 by marking Adobe Reader with expired U.S. Patent Nos. 4,837,613; 5,050,103; D337,604; and D338,907. (See SF Tech., No. C-09-06083 (N.D. Cal., Dec. 30, 2009), ¶¶ 37-42.)

The SF Tech. suit also joins, in the same action, unrelated §292 claims against fourteen other defendants.

[PubPat] does not seek to assert duplicative “expired patent” §292 claims against Defendant in this action. However, [PubPat] believes that the SF Tech. suit may be dismissed on a non-merits ground, such as improper joinder under Fed. R. Civ. P. 20.

This other lawsuit has the potential to make PubPat’s intent case stronger.  In the Complaint, PubPat notes:

[U]pon information and belief, those members of the [Adobe] Compliance Team responsible for §292 compliance have allowed, and continue to allow, mis-marking of the Inapplicable Patents despite actual knowledge that such mis-marking violates federal law.

Indeed, after receiving specific notice, on or about Dec. 30, 2009, that the legality of Adobe Reader’s patent notices had been called into question by the SF Tech. lawsuit, members of the Compliance Team made no substantial effort to correct even the specific deficiencies noted in the SF Tech. complaint (i.e., the expired patents), much less to rectify the larger problem involving the numerous Inapplicable Patents. Accordingly, since at least early January, 2010, Defendant’s marking of expired and inapplicable patents on Adobe Reader has been deliberate and willful, thus making this case exceptional.

The newest version of Adobe Reader (9.3.1) was released with false markings on February 16, 2010.

It will be interesting to see how this case develops.

Categories: False marking Tags: , ,

The Qui Tam Beat Goes On

March 5, 2010 Leave a comment

See full size image

Since we last updated this list, the filing of qui tam suits for false marking of patent information has continued unabated.  At some point, we will have to reconsider whether to keep filing posts like this one, or dedicate a single page to false marking suits, or let the astute reader find such suits on his or her own initiative.  It’s becoming rather difficult to keep up with all the new cases.  In that vein, please do not consider this list comprehensive, or authoritative, though we have done our best to make it as complete as possible. 

Though the filing of such suits has not slowed down, whether they will continue to be brought profitably by individuals or small entities remains to be seen.  A Manager’s Amendment to S.515 (the currently-pending patent reform act) would likely do away with most, if not all, of these cases (more info in a later post).

Here is a listing of cases filed since our last post on February 25, 2010 (please note that this list does not include all defendant companies, since only the first-named defendant is included in each entry):

  • Calton v. Procter & Gamble, 10-cv-00406, 2/25/2010, N.D. Ala.
  • Simonian v. L’Oreal USA Creative, Inc., 10-cv-01345, 2/26/2010, N.D. Ill.
  • Roscoe’s Tech. & Nanotech. v. Lyman Prod., 10-cv-00083, 2/28/2010, E.D. Tex.
  • Hollander v. Ortho-McNeil-Janssen Pharm., Inc., 10-cv-00836, 3/1/2010, E.D. Pa.
  • Hollander v. B. Braun Medical, Inc., 10-cv-00835, 3/1/2010, E.D. Pa.
  • Patent Compliance Group Inc v. Avid Identification Sys., Inc., 10-cv-00407, 3/1/2010, N.D. Tex.
  • Patent Compliance Group, Inc. v. Int’l E-Z Up, Inc., 10-cv-00406, 3/1/2010, N.D. Tex.
  • Patent Compliance Group Inc v. InterDesign Inc., 10-cv-00404, 3/1/2010, N.D. Tex.
  • Patent Compliance Group v. North States Indus., 10-cv-00405, 3/1/2010, N.D. Tex.
  • Patent Compliance Group v. Dyson Inc., 10-cv-00419, 3/2/2010, N.D. Tex.
  • FLFMC, LLC v. Wham-O, Inc., 10-cv-00287, 3/2/2010, W.D. Pa.
  • Englehardt v. Costco Wholesale Corp., 10-cv-01424, 3/3/2010, N.D. Ill.
  • Heathcote Holdings Corp., Inc. v. Procter & Gamble Co., 10-cv-01441, 3/3/2010, N.D. Ill. 
  • Perfection Prod. Mgmt, LLC v. Allway Tools, Inc., 10-cv-00459, 3/3/2010, N.D. Ohio
  • Perfection Prod. Mgmt, LLC v. Stanley Works, 10-cv-00452, 3/3/2010, N.D. Ohio
  • Brinkmeier v. Exergen Corp., 10-cv-00176, 3/3/2010, D. Del.
  • Lightspeed Aviation, Inc. v. Bose Corp., 10-cv-00239, 3/3/2010, D. Or.
  • Zojo Solutions, Inc. v. Zircon Corp., 10-cv-01431, 3/3/2010, N.D. Ill.
  • Perfection Prod. Mgmt, LLC v. Homer TLC, Inc., 10-cv-00465, 3/4/2010, N.D. Ohio
  • Perfection Prod. Mgmt, LLC v. Am. Safety Razor Co., LLC, 10-cv-00463, 3/4/2010, N.D. Ohio
  • Simonian v. Playtex Prod., Inc., 10-cv-01455, 3/4/2010, N.D. Ill. 
  • Heathcote Holdings Corp., Inc. v. Leapfrog Enter., Inc., 10-cv-01471, 3/5/2010, N.D. Ill.
  • Heathcote Holdings Corp., Inc. v. Phillips Screw Co., 10-cv-01468, 3/5/2010, N.D. Ill.

Kudos to Lightspeed Aviation for bringing the issue home to the District of Oregon.

[Updated at 11:15am with new Heathcote Holdings cases]

Categories: False marking Tags:

Irreconcilable Jury Verdicts Lead to A New Trial

March 1, 2010 Leave a comment

Today the Federal Circuit decided Comaper Corp. v. Antec, Inc. (PDF here), regarding infringement of a patent directed to a cooling device designed to mount within the drive bay of a computer.

The district court (E.D. Pa., Honorable Petrese B. Tucker, presiding) construed the claims before presenting the case to the jury.  After a five-day trial, the jury returned a “Special Verdict” in which it found infringement of claims 1, 2, 7, 12, and 13 of asserted U.S. Pat. No. 5,955,955.  The jury also found willful infringement on the part of Antec.  Finally, the jury found that the asserted claims of the patent were not anticipated, and that independent claims 1 and 12 were not obvious.  Interestingly, the jury found that claims 2 and 7 (which depend from claim 1), and claim 13 (which depends from claim 12) were invalid as obvious.

Those of you with a knowledge of patent law can immediately spot the problem: dependent claims are narrower than the independent claims from which they depend, so verdicts finding the dependent claims obvious, and the independent claims not obvious, are irreconcilable.

“A broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is invalid for obviousness.” Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009) (citing Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007)).

Antec asserted, and Comaper could not dispute, that a new trial was required on this basis.  Though Comaper argued that Antec could not appeal the verdict because it did not raise an objection (under Fed. R. Civ. P. 49(b)) before the jury was dismissed, this argument failed because the appropriate provision is Fed. R. Civ. P. 49(a):

As Comaper itself recognizes, under Third Circuit law, when a jury returns a special verdict, no contemporaneous objection prior to the dismissal of the jury is required in order to preserve the right on appeal to challenge the verdicts as inconsistent. See Malley-Duff & Assocs., Inc. v. Crown Life Ins. Co., 734 F.2d 133, 144–45 (3d Cir. 1984) (“[N]o decision of this court has precluded appellate review of inconsistencies under a Rule 49(a) [special] verdict in the absence of an objection before the jury was discharged.”).  Thus, by making its post-verdict motion for a new trial on the ground of inconsistent verdicts, Antec properly preserved this issue for appeal. [emphasis added]

Third Circuit law recognizes that where verdicts are genuinely inconsistent and the evidence might support either of the inconsistent verdicts, the appropriate remedy is ordinarily to order an entirely new trial. See Malley-Duff, 734 F.2d at 145 (vacating judgment due to inconsistent special verdicts and ordering a new trial); see also Acumed LLC v. Advanced Surgical Servs., Inc., 561 F.3d 199, 217–18 (3d Cir. 2009) (“[I]f verdicts are genuinely inconsistent and if the evidence might support either of the ‘inconsistent’ verdicts, the appropriate remedy is ordinarily . . . not simply to accept one verdict and dismiss the other, but to order an entirely new trial.” (quoting Mosley v. Wilson, 102 F.3d 85, 91 (3d Cir. 1996) (quotation marks omitted)). Thus, when faced with inconsistent verdicts and the evidence would support either of the inconsistent verdicts, the district court must order a new trial. [emphasis added]

 Thus, the Federal Circuit assessed the evidence presented to the jury.  Upon finding that the evidence could support a finding of obviousness regarding claims 2, 7, and 13 (the narrower dependent claims), the Federal Circuit remanded to the district court for a new trial (the broader independent claims being immediately suspect).

I note here an issue of importance for the trial attorneys:  Always make a motion for Judgment as a Matter of Law (JMOL) under Fed. R. Civ. P. 50(a) before the case is given to the jury.  To preserve a basis for a JMOL under Fed. R. Civ. P. 50(b) after the jury verdict, a party must have made the first motion under Rule 50(a).  Merely meeting the “letter and spirit” of Rule 50(a) by making your position clear to the Court will not be enough.  Antec failed to make the 50(a) motion here, and thus forfeited its right to make the 50(b) motion after the verdict; based on the Federal Circuit’s analysis of the facts, Antec might well have prevailed on that later motion.  The same procedural error arose in i4i v. Microsoft and cost Microsoft dearly.

[Updated: Thank you to Ian Gates for alerting me to a typo in the 8th paragraph.  The phrase “narrower independent claims” should have been written as “narrower dependent claims,” and is now corrected.]

Categories: CAFC
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