A Defined Numerical Parameter Can Still Be Indefinite, If It’s Not Clear How to Measure It

In The Dow Chemical Co. v. Nova Chemicals Corporation (Canada), [2014-1431, 2014-1462] (August 28, 2015) the Federal Circuit applied the change of law exception to reject Dow’s bid for supplemental damages for infringements occurring after the original judgment — the change of law being the change of the standard of indefiniteness resulting from the Supreme Court decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014).

The Federal Circuit found that its original decision would have been different under the new Nautilus standard.  The claims at issue require “a slope of strain hardening coefficient greater than or equal to 1.3.”  The patent explained that the slope of strain hardening
coefficient was a new Dow construct not previously known in the prior art, and is calculated by a given formula from the slope of strain hardening curve.  However, it turns out that the strain hardening curve is in fact curve, meaning it does not have a single slope.  .Nova complained that the patent fails to teach where and how the slope of strain hardening should be measured.  The Federal Circuit found that there were four ways to measure the slope, and that each of these four methods may produce different results, and because the methods do not always produce the same results, the method chosen
for calculating the slope of strain hardening could affect whether or not a given product infringes the claims.

Under Nautilus a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty,those skilled in the art about the scope of the invention.  The Federal Circuit held that “the required guidance is not provided by the claims, specification, and prosecution history.”  The Federal Circuit said that a claim term is indefinite if it “leave[s] the skilled artisan to consult the ‘unpredictable vagaries of any one person’s opinion.’” The Federal Circuit concluded that the claims here are invalid as indefinite, and the award of supplemental damages must be reversed.

While measured parameters with numerical values at first appear to be definite, patent drafters must be clear about how those parameters are measured — at least where the value can vary depending upon the method used.


Avoid Saying Anything About the Prior Art Except How it Differs from the Claims

In Inline Plastics Corp. v. EasyPak, LLC, [2014-1305] August 27, 2015, the Federal Circuit vacated the district court’s claim construction of “frangible section” as being improperly limited to the preferred embodiment, and therefore reversed the district court’s judgment of non-infringement.

The preferred embodiment of the “frangible section” is described as having a pair of parallel score lines, although an alternative embodiment is described as having a single score line.  EasyPak argued that the prosecution history supports construing frangible section as requiring at least two score lines, but the Federal Circuit disagreed,  noting that the examiner did not require such limitation, and it was not a condition of patentability.

in distinguishing a prior art reference, the applicant described the prior art as having a single score line, but the Federal Circuit observed that this was not the basis for distinction.  The Federal Circuit further found that claim differentiation also supported the broader construction of frangible section, because the alternative embodiment specifically mentioned a single score line.

Although all’s well that ends well, the patent applicant’s description of the prior art formed the basis for the iinfringer’s claim construction arguments.  When characterizing and distinguishing prior art, it is probably best not to mention any aspect of the prior art that is not necessary to the basis for distinguishing the prior art.



He Fought the Law, and the Law Won

The most remarkable thing about Hyatt v Lee, [2014-1596], (August 20, 2015), is that the plaintiff Mr. Hyatt has 400 pending patent applications that were filed before June 8, 1995.  This means that any patent that issues on one of this applications will have a 17 year term from issuance, expiring a minimum of 37 years after they were filed.  Each of these applications averages 116 independent claims, and 299 total claims, which if filed electronically today would cost $35620 in filing fees per application.  The Patent Office estimates that combined, Mr. Hyatt’s 400 applications include 45,000 independent claims and 115,000 total claims.

It is not surprising that the USPTO is not amused with Mr. Hyatt, and in August 2013, the began to issue “Requirements” in each of the application families, asking Mr. Hyatt to select a number of claims from each family (not to exceed 600), identify the earliest applicable priority date and supporting disclosure for each selected claim; and 3) present a copy of the selected claims to the USPTO.

Mr. Hyatt’s concern was that as patents issued, this could make information about unpublished applications public to his detriment.  This seems a legitimate concern, but facing the examination of 115,000 total claims, the USPTO was not sympathetic, and the Federal Circuit backed them up.

You can buck the system, but you have to remember that the system bucks back.


Obviousness is Alive and Well

In ABT Systems, LLC v. Emerson Electric Co., [2014-1618, 2014-1700] (August 19, 2015), the Federal Circuit reversed the district court’s denial of Emerson’s motion for JMOL that the claims of the patent in suit were invalid for obviousness.

Rather than mounting a strong challenge to the merits of Emerson’s theory of obviousness based on the disclosures of the prior art references, ABT takes the position that Emerson’s argument is flawed because the references upon which it relies are either non-enabled or teach away.  The Federal Circuit said that the references do not “teach away,” as ABT argues, because it is clear that none come near to criticizing, discrediting, or otherwise discouraging investigation into the claimed invention.  The Federal Circuit also rejected ABT’s argument that the references were not enabled because even “[a] non-enabling reference may qualify as prior art for the purpose of determining obviousness,” Symbol Tech., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991), and even “an inoperative device . . . is prior art for all that it teaches,” Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989).

In looking for a reason to combine the references, the Federal Circuit said that it was well settled that even where references do not explicitly convey a motivation to combine, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”  The Federal Circuit said that a court may find a motivation to combine prior art references in the nature of the problem to be solved, particularly with simpler mechanical technologies.  The Federal Circuit the references themselves and the nature of the problem provided the required reason to combine.

ABT also tried to rely upon commercial success, but the Federal Circuit said that its case was undermined by the failure to establish a nexus between the invention and the commercial success of the products embodying the invention.  Advertisements and press releases were not a substitute for market share information or industry praise or recognition for the novelty of the invention.  The Federal Circuit further found the number of licenses was insufficient to overcome a convincing case of invalidity without showing a clear nexus to the claimed invention.

PTAB in Reexamination Should Have At Least Acknowledged Prior Court Claim Construction

In Power Integrations, Inc. v. Lee, [2014-1123], (August 12, 2015), the Federal Circuit reversed the PTAB’s decision affirming the rejection of claims of U.S. Patent No. 6,249,876, in a reexamination proceeding.

The Federal Circuit found that the PTAB erred in failing to consider the previous construction of the claims in District Court litigation.  While acknowledging that the PTAB is generally not bound by a prior judicial construction of a claim term, and that in reexaminations the PTAB applies a different claim construction standard than applied by the district court, the Federal Circuit found that the PTAB still had an obligation to “acknowledge” the interpretation, and “assess” whether it is consistent with the broadest reasonable construction of the term.  The Federal Circuit said that het PTAB declined to address or even acknowledged the district court’s prior determination, and because the patent owner’s construction was “tied” to the district courts’ construction, the Federal Circuit thought that the PTAB had an obligation to evaluate that construction and determine whether it was consistent with the broadest reasonable interpretation.

No Liability for Inducing Non-Infringement

In JVC Kenwood Corporation v. Nero, Inc., 2014-1011 (August 17, 2015), the Federal Circuit held that if what the end user is doing does not constitute infringement (because of standards essential patents licensed to the end users), the inducing those end users to do something that is not infringement, is not inducing patent infringement.

JVC’s patents were part of a patent pool licensed to the manufacturers of DVD discs and disc drives.  Nero’s software helps the end users of licensed DVD discs and disc drives to burn and play the discs.  The end user’s use of the DVD discs and disc drives was not infringement because of a pool license to the manufactures of the discs and disc drives, so Nero’s actions in selling the software did not induce infringement.