Archive
New Federal Circuit Action in Novo Nordisk v. Caraco
On April 17, 2012, the Supreme Court issued its opinion in Caraco v. Novo Nordisk, holding that “Congress has authorized a generic company to challenge a [brand manufacturer’s] use code’s accuracy by bringing a counterclaim against the brand manufacturer in a patent infringement suit.” In so holding, the Supreme Court reversed a Federal Circuit ruling from 2010, which vacated an injunction of the lower court requiring the brand manufacturer to change its use code at the FDA. In that lower court ruling, the Eastern District of Michigan entered the following injunction:
Novo Nordisk is hereby directed by mandatory injunction under 21 U.S.C. § 355(j)(5)(C)(ii)(1)(bb) to correct within twenty (20) days from the date of this Order and Injunction its inaccurate description of the ‘358 patent by submitting to FDA an amended Form FDA 3542 that reinstates its former U-546 listing for Prandin and describes claim 4 of the ‘358 patent in section 4.2b as covering the “use of repaglinide in combination with metformin to lower blood glucose.”
In light of the Supreme Court’s decision, Caraco on May 1 filed a motion at the Federal Circuit, seeking to have the Eastern District of Michigan’s injunction affirmed (text from the Federal Circuit’s docket):
| 5/1/2012 | MOTION: Entry 85 :by Appellees – Motion to Affirm Injunction of the District Court pursuant to U.S. Supreme Court decision Reversing the Court’s Judgment. SERVICE : by Mail on 5/1/2012 |
Today, the Federal Circuit entered an order [PDF] giving Novo Nordisk until tomorrow to file its response to Caraco’s motion. The full text of the order reads:
Novo Nordisk A/S et al. (Novo Nordisk) move for an extension of time to respond to Caraco Pharmaceutical Laboratories, Ltd. et al. (Caraco)’s motion to affirm the injunction of the United States District Court for the Eastern District of Michigan. Caraco opposes. Novo Nordisk replies.
The court notes that on April 17, 2012, the Supreme Court of the United States in Caraco Pharm. Lab., Ltd. v. Novo Nordisk A/S, 132 S. Ct. 1670 (2012) reversed the judgment of this court and remanded the case for further proceedings.
Upon consideration thereof,
IT IS ORDERED THAT:
(1) This court’s opinion of April 14, 2010 is vacated, the mandate of this court issued on August 5, 2010 is recalled, and the appeal is reinstated.
(2) The motion is granted to the extent that Novo Nordisk’s response is due May 24, 2012.
Should be interesting to see what comes of this in the near future.
Decision in Bilski v. Kappos
The Supreme Court released its decision in Bilski v. Kappos today, a long-awaited case dealing with the scope of patentable subject matter under 35 USC Sec. 101. In short, the Supremes affirmed the Federal Circuit’s judgment that Bilski’s business method was not patent-eligible, but stated that the Federal Circuit’s “machine-or-transformation” test was not the sole test of patentable subject matter. More will come shortly, but for now, here is a link to the opinion:
Bilski v. Kappos opinion
There is bound to be much erudite commentary on the Bilski decision. Here is a running list of the posts I have found that might be of interest to the casual (or professional) reader. If you have something you want linked, let me know. Note that Gene Quinn at IPWatchdog.com also has what appears to be a memo to Examiners at the U.S. Patent and Trademark Office giving a preliminary assessment of Bilski‘s impact on their operations. [As an aside, so much of the following commentary is really excellent that it gives me pause regarding whether I should even try to contribute my two cents’ worth. Nice work, everyone.]
Eric Guttag at IPWatchdog
IP Now: Australia and New Zealand
IPWatchdog Memo to Examiners [PDF]
Joe Mullin at Corporate Counsel
Joe Mullin at The Prior Art [same]
Ted Sichelman at Patently-O
Federal Circuit Giveth, and Taketh Away
In business, we often forget, the effect of an adverse (or favorable) court ruling can be drastic, and immediate. Today’s shining example of this effect is the ruling of the Court of Appeals for the Federal Circuit that it will reconsider, en banc, its March 4, 2010 ruling (in favor of TiVo) in Tivo Inc. v. Echostar Corp, et al. In that earlier decision, the Federal Circuit held (roughly) that Echostar’s attempts to design around TiVo’s DVR patents (after an earlier loss at trial) were properly found invalid by the district court, and upheld a more-than-$90 million award against Echostar. The decision and award have now been vacated, and the case will be decided anew.
TiVo’s stock dropped approximately 35% in the minutes after the Federal Circuit’s decision was announced today, wiping out grand amounts of book-money for TiVo’s shareholders. Before, however, anyone cries great tears for TiVo and its owners, please recall that this effect essentially restores the status quo. After the Federal Circuit’s March 4 ruling, TiVo’s stock price leapt more than 60%; today’s loss brings TiVo’s shares back to within a dollar of their pre-March 4th selling price.
For you legal nerds, the Federal Circuit’s order establishes that rehearing en banc will address the following issues:
- Following a finding of infringement by an accused device at trial, under what circumstances is it proper for a district court to determine infringement by a newly accused device through contempt proceedings rather than through new infringement proceedings? What burden of proof is required to establish that a contempt proceeding is proper?
- How does “fair ground of doubt as to the wrongfulness of the defendant’s conduct” compare with the “more than colorable differences” or “substantial open issues of infringement” tests in evaluating the newly accused device against the adjudged infringing device? See Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985).
- Where a contempt proceeding is proper, (1) what burden of proof is on the patentee to show that the newly accused device infringes (see KSM, 776 F.2d at 1524) and (2) what weight should be given to the infringer’s efforts to design around the patent and its reasonable and good faith belief of noninfringement by the new device, for a finding of contempt?
- Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?
Between this and the rehearing en banc order in Therasense, Inc. v. Becton, Dickinson and Co. there is a lot of amicus briefing fun to be had.
PTO’s Overbroad Claim Construction is Not Reasonable
Patent prosecutors, have you ever felt that the PTO’s constructions of your pending claims were just hideously overbroad? (Can I get an “Amen”?). Today, the Federal Circuit helped you out by deciding an appeal from reexamination proceedings in the U.S. Patent and Trademark Office (PTO). The Federal Circuit’s decision in In re Suitco Surface can be summarized in one quote from the opinion (which you will rejoice in pasting into your Office action responses and Appeal briefs):
The broadest-construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention.
Suitco Surface, Inc. owns U.S. Patent No. 4,944,514 (’514 patent), claiming a “floor finishing material” for use on athletic courts, bowling lanes, and other “floor surfaces [made] of wood, linoleum, terrazzo, [or] concrete.” Claim 4 is representative:
4. On a floor having a flat top surface and an improved material for finishing the top surface of the floor, the improvement comprising:
at least one elongated sheet including a uniform flexible film of clear plastic material having a thickness between about one mil and about twenty-five mils and
a continuous layer of adhesive material disposed between the top surface of the floor and the flexible film, the adhesive layer releasably adhering the flexible film onto the top surface of the floor.
This is the third trip to the Federal Circuit for the ’514 patent. In 1996, Middleton, Inc., the exclusive licensee of the ’514 patent, brought suit against 3M Company in the U.S. District Court for the Northern District of Illinois alleging infringement of claims 1-4 of the ’514 patent. In that case, the district court construed the terms “material for finishing” and “uniform flexible film.” “Material for finishing” was construed to mean “a material that makes more durable the underlying surface of the floor, and is applied for that purpose.” “Uniform flexible film” was construed to mean “the material must be of a uniform thickness, and excludes material in which there are any variations in thickness.”
3M moved for summary judgment of noninfringement based on both limitations, but the district court granted the motion based solely on “material for finishing.” Middleton, Inc. v. Minn. Mining & Mfg. Co., No. 96 C 6781, 1998 WL 852841 (N.D. Ill. Nov. 24, 1998). Middleton appealed and the Federal Circuit vacated and remanded, finding no support for “durability” in the ‘514 patent’s specification or prosecution history. Middleton, Inc. v. Minn. Mining & Mfg. Co., No. 96 C 6781, 1999 WL 1072246 at *4 (Fed. Cir. Nov. 16, 1999).
On remand, the Northern District of Illinois granted 3M’s second motion for summary judgment, this time based on the “uniform flexible film” limitation. Middleton, Inc. v. Minn. Mining & Mfg. Co., No. 96 C 6781, 2001 WL 1155151 at *2 (N.D. Ill. Sept. 28, 2001). The Federal Circuit again remanded, finding that the district court’s construction was too narrow. Middleton, Inc. v. Minn. Mining & Mfg. Co., 311 F.3d 1384, 1389 (Fed. Cir. 2002).
The Northern District being by now sick of the proceedings (blatant conjecture), it transferred the case to the Southern District of Iowa. 3M then filed an ex parte reexamination request with the PTO. The district court stayed the case after the request was granted. In reexam, the examiner rejected the claims on various grounds (not discussed here) after construing their terms. Suitco appealed to the PTO’s Board of Patent Appeals and Interferences (BPAI).
In affirming the examiner’s rejections, the BPAI construed the term “material for finishing the top surface of the floor” to mean “requiring a material that is structurally suitable for placement on the top surface of a floor.” Under that construction, according to the Board, the “material for finishing the top surface of the floor” could be any layer above the floor regardless of whether it was the top or final layer (emphasis in Federal Circuit opinion). Suitco appealed.
The Federal Circuit cited the appropriate standards for claim construction and review:
“During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). This Court thus reviews the PTO’s interpretation of disputed claim language to determine whether it is “reasonable.” In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997).
Suitco argued both that the Board should have been bound by the Federal Circuit’s earlier construction of “material for finishing the top surface of the floor,” and that the Board’s adopted construction was unreasonable. The Federal Circuit considered only the latter point, and vacated the BPAI’s holding.
The Federal Circuit noted that the language of the claims requires a “material for finishing the top surface of the floor” (emphases in opinion). In light of this, the court noted that
“[a] material cannot be finishing any surface unless it is the final layer on that surface. Otherwise, the material would not be ‘finishing’ the surface in any meaningful sense of the word. The PTO’s proffered construction ignores this reality by allowing the finishing material to fall anywhere above the surface being finished regardless of whether it actually ‘finishes’ the surface….If the PTO’s construction were accepted, a prior art reference with carpet on top of wood, on top of tile, on top of concrete, on top of a thin adhesive plastic sheet anticipates the claims in question because an adhesive plastic sheet falls at some point in the chain of layers. This construction does not reasonably reflect the plain language and disclosure of the ’514 patent.” (emphasis added).
The Federal Circuit thus vacated the BPAI’s rejection and remanded for new proceedings on this issue:
Although the PTO emphasizes that it was required to give all “claims their broadest reasonable construction” particularly with respect to claim 4’s use of the open-ended term “comprising,” see Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“the open-ended term comprising . . . means that the named elements are essential, but other elements may be added”), this court has instructed that any such construction be “consistent with the specification, . . . and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (quoting In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983)) (emphasis added).
The PTO’s construction here, though certainly broad, is unreasonably broad. The broadest-construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (“The claims of a patent are always to be read or interpreted in light of its specifications.”). In that vein, the express language of the claim and the specification require the finishing material to be the top and final layer on the surface being finished. See, e.g., ’514 patent, col.1 ll.15-20 (“The present invention is directed generally to a material and method for quickly and easily producing a transparent wear resistant finish on a smooth flat surface subject to wear and more particularly to a material and method for finishing a floor . . . .”). The PTO’s proffered construction therefore fails. (emphasis added).
As noted above, patent prosecutors may want to copy and paste the above holding into their word processors relatively liberally. In light of KSR Int’l Co. v. Teleflex Inc., the PTO has broad discretion to make obviousness rejections over the prior art. One way to fight those rejections (assuming the patent applicant and his or her prosecutor are interested) is to argue that the PTO’s construction of the claims is overbroad (as they certainly can be), thus narrowing the field of applicable prior art. Incorporating the Federal Circuit’s holding into an AutoText entry might be a nice shortcut in beginning your next “overbroad reasonable construction” argument.
Wheee! Nintendo Prevails at the Federal Circuit.
Anascape sued Nintendo* in the Eastern District of Texas in 2006, alleging that Nintendo’s Wii Remote, Wii Classic, Wii Nunchuk and Game Cube controllers infringe certain claims of U.S. Patent No. 6,906,700 (‘700 patent). The Eastern District contrued the relevant claims, and a jury found the asserted claims valid and infringed. Nintendo appealed to the Federal Circuit, which today reversed.
The ‘700 patent, entitled “3D Controller with Vibration,” was filed November 16, 2000 as a continuation-in-part (CIP) of the application that became U.S. Patent 6,222,525 (the ’525 patent). The two patents are directed generally to video game controllers offering control of on-screen objects with 6-degrees-of-freedom movement (forward/backward, left, right, yaw, pitch, roll), with the ‘525 patent focusing on controllers with single input members and the ‘700 patent focusing on controllers with multiple input members.
A complicating factor for Anascape was that there existed invalidating prior art that was disclosed between the filing dates of the ‘525 and ‘700 patents. Thus, because it was filed as a CIP of an earlier patent, the validity of the claims of the ’700 patent (and, consequently, the claim for infringement) depended upon whether those claims, as construed by the Eastern District, were entitled to the filing date of the ’525 patent (July 5, 1996). If not entitled to the earlier date, Anascape had conceded that the asserted claims were invalid under 35 U.S.C. Sec. 102 as being anticipated by prior art consisting of a Sony “DualShock” controller sold in the United States in 1998 (described in a patent application of Goto published in 1998) and a Sony “DualShock 2” controller sold in the United States in October 2000.
The Federal Circuit laid out the controlling law and issue:
To obtain the benefit of the filing date of a parent application, the claims of the later-filed application must be supported by the written description in the parent “in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). See generally Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., No. 2008-1248, 2010 WL 1007369 (Fed. Cir. Mar. 22, 2010).
The issue turns on whether the specification of the ’525 patent supports not only controllers having a single input member that operates in six degrees of freedom, as described and claimed in the ’525 patent, but also controllers having multiple input members that together operate in six degrees of freedom, as described and claimed in the ’700 patent.
The parties’ contentions on this point boiled down to the following assertions:
- Anascape argued, for the purpose of establishing the ’525 filing date for the ’700 claims, that the ’525 specification also supports the ’700 claims that are not limited to a single input member operable in six degrees of freedom.
- Nintendo disputed that position, arguing that the ’525 specification is directed to only a single input member.
Anascape tried to argue that a number of the ‘525 patent’s figures described multiple input members operating in fewer than six degrees of freedom, thus supporting the ‘700 patents later claims. The Federal Circuit noted, however, that “[t]his statement does not match the description in the patent.” In fact, Nintendo had compiled over 20 statements in the ‘525 patent’s specification to the effect that “the invention is directed to a single input member that is operable in six degrees of freedom.”**
Anascape tried to avoid these problems by noting that some of the claims of the earlier ‘525 patent recited input members “moveable on at least two axes,” arguing that this adequately described, for priority purposes, use of more than a single input member for 6-degree-of-freedom control. The Federal Circuit rightly ignored this argument, noting that the claim language at issue was added to the ‘525 patent in 2000 (i.e. too late to help the ‘700 patent overcome the prior art).
Anascape also tried to argue that extensive changes it made to the ‘700 patent’s specification, all supposedly supporting claims to multiple-input-member controllers, were not new matter relative to the ‘525 patent (which, if it was true, would defeat the claim that such material was present in the earlier application). The Court was rightly skeptical, stating:
This is classical new matter. See, e.g., Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1344 (Fed. Cir. 2008) (“the examiner rightly refused to allow the applicants to amend the specification to remove references to ‘heat’ as the way of sealing the sleeve,” for the change “would have broadened the patent and introduced impermissible new matter” and rendered the reissue claims “invalid for lack of support in the initial disclosure”).
Anascape tried also to assert that the ‘525 patent was only describing a preferred (single input) embodiment of a 6-degree-of-freedom controller, and was not intended to disclaim other (multiple input) embodiments. The Federal Circuit did not chase this red herring:
However, the question is not whether the patentee in the ’525 specification “disclaimed” the scope of the ’700 patent; the question is whether the ’525 specification sufficiently describes the later-claimed subject matter, as to entitle the ’700 claims to the filing date of the ’525 application. See Lucent Technologies, Inc. v. Gateway, Inc., 543 F.3d 710, 718-19 (Fed. Cir. 2008) (to claim priority based on the filing date of an earlier application, the earlier application must support the claims of the later-filed application).
A patentee is not deemed to disclaim every variant that it does not mention. However, neither is a patentee presumed to support variants that are not described. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (“The purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not; the applicant for a patent is therefore required to ‘recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.’” (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991))).
Anascape tried various arguments directed to the testimony of experts, but neither of those was availing, being either unsupported by evidence (that’s bad), or misstatements of testimony (also bad).
Concluding, the Federal Circuit found that the later, asserted, ‘700 patent was not entitled to claim the earlier filing date of the ‘525 patent, was thus invalid. Judgment, and $21 million damages award, reversed.
Thus, the description in the ’525 specification is not reasonably read as describing a larger invention, of which the single input was only a preferred embodiment. See Honeywell Int’l, Inc. v. ITT Industries, Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (“Here, the written description uses language that leads us to the conclusion that a fuel filter is the only ‘fuel injection system component’ that the claims cover, and that a fuel filter was not merely discussed as a preferred embodiment.”). Whether or not the inventor could have described the ’525 invention more broadly, “[i]t is not sufficient for purposes of the written description requirement of §112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Lockwood, 107 F.3d at 1572.
We conclude that the only reasonable reading of the ’525 specification is that it is directed to and describes only a controller having a single input member operable in six degrees of freedom. In contrast, the ’700 specification and claims were enlarged to cover more than single input members operable in six degrees of freedom. The district court erred in ruling that this subject matter is adequately described in the ’525 specification, for the statutory requirements are not met, on any reading of the ’525 specification.
As an aside, Judge Gajarsa concurred in the result and reiterated his point (made in the Eli Lilly v. Ariad en banc opinion) that the written description requirement of Sec. 112 is best used (as here) to determine priority claims and not enablement:
While I agree with the majority’s result, I write separately to highlight the majority’s best use of the written description requirement as a priority-policing mechanism in contradistinction to an independent basis for invalidity. [Ariad Pharm., Inc. v. Eli Lilly & Co., No. 2008-1248, 2010 WL 1007369 (Fed. Cir. March 22, 2010)]
***
While the statutory language has been interpreted by this court to require a written description for patentability, it is not the ideal vehicle for invalidating claims. Such a vehicle is better provided by the enablement requirement of § 112.
*N.B. Anascape also sued Microsoft, which settled just before trial, and licensed its patents to Sony. Neither Microsoft’s nor Sony’s decisions look good in hindsight (which, of course, is at least 20/20).
**Practice tip: try not to write “the invention is directed to…” in your specifications. Especially 20 times.
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