United States: Intellectual Property Federal Circuit Alert

Federal Circuit Finds Infringement Could Not Be Decided as a Matter of Law

In a November 7, 2005 opinion, the Federal Circuit vacated a grant of summary judgment of non-infringement by the United States District Court for the Southern District of Indiana. The Federal Circuit found that the question of whether the accused child's car seat infringed the asserted claims of U.S. Patent No. 6,550,862 ("the '862 patent") and 6,612,649 ("the '649 patent") could not be decided as a matter of law, but rather was a question of fact for a jury to determine, not the judge.

The plaintiff Dorel Juvenile Group, Inc. is the exclusive licensee of the '862 patent and its continuation, the '649 patent, both directed to a child's car seat assembly having a retractable cup holder. Defendant Graco Children's Products, Inc. ("Graco") conceded that its car seat embodied all of the elements of the asserted claim of the '862 and '649 patents, except for a certain element related to the seat and base assembly. Specifically, Graco argued that its accused car seat, which consisted of a base and a seat firmly held together by screws, did not have a base "removably attached" (claim 1 of the '649 patent) or "removably secured" (claim 1 of the '862 patent) to the seat.

The District Court interpreted these terms according to their ordinary meaning and concluded that they require the seat and base to be "detached or unsecured on some occasion during the lifetime of the product." In providing this construction, the District Court refused to read into the terms a requirement of "ease of separation" since the claim language did not require such a limitation. The District Court further opined that these claim terms required that the claimed "seat" be construed such that when it is removed, the "seat" remains functional and undamaged. Applying this claim construction, the District Court found no literal infringement because the two parts of the accused Graco car seat "were found to be an integrated unit," lacking a seat and base as separate, stand-alone structures."

On appeal, the Federal Circuit agreed with the lower court's claim construction, but not its finding of infringement. In affirming the District Court's claim construction and finding that "ease of separation" was not a requirement, the Federal Circuit demonstrated the extent to which the drawings in a patent specification can be found to provide teachings to one skilled in the art. Based on the presence of the word "COLA" next to the retractable cup holder in one of the drawings, the Federal Circuit stated:

Given the configuration of the cup holder and the seat's base, spilled cola would surely invade the bottom portion, where it could attract bees, hornets and other unwelcome insects. The occasional need to unscrew the top portion from the bottom portion to clean away spilled cola, or other matter that could find its way from the cup holder into the bottom portion, comports with the district court's holding that the seat and base merely be capable of separation.

However, the Federal Circuit did disagree with the lower court's conclusion that the accused Graco car seat could not infringe as a matter of law because it "lacks a seat separate from a base and, at most, includes a base that is integral to the seat." The Federal Circuit found that the accused Graco car seat could be disassembled into top and bottom structures by an ordinary or one-way screwdriver, such that they are "removably attached" and "removably secured." However, the Federal Circuit found that whether the top and bottom structures of the Graco car seat were the claimed "seat" and "base" of the asserted patents such that the top structure could still function as a "seat" upon being removed was a question of fact that could not be determined on summary judgment. Because the lower court invaded the province of the finder of fact, here a jury requested by Dorel, the Federal Circuit vacated the summary judgment of non-infringement and remanded the case to the District Court.

For the full opinion, see: http://fedcir.gov/opinions/05-1026.pdf

Norian Corp v. Stryker Corp., No. 05-1172

In a December 6, 2005 opinion, the Federal Circuit held that Stryker's chemical composition did not infringe the asserted claims of Norian's U.S. Patent No. 6,002,065 ("the '065 patent") and affirmed the United States District Court for the Northern District of California's claim construction and grant of summary judgment of non-infringement.

Norian asserted that Stryker infringed three claims of the '065 patent directed to a kit for preparing calcium phosphate compositions for use as bone cements in medical or dental procedures. The asserted claims were directed to a kit for preparing calcium phosphate minerals requiring, among other limitations, "a solution consisting of water and a sodium phosphate." The accused Stryker kit contained a solution of two different sodium phosphates (monobasic sodium phosphate monohydrate and dibasic sodium phosphates), and thus the question posed was whether the solution in Stryker's kit fell within the scope of the asserted claims. The District Court concluded that the proper construction of the claim term required that the solution be made from only a single sodium phosphate, and thus Stryker was found not to literally infringe the claims.

The District Court arrived at its claim construction and conclusion based on first noting that the claim language used the restrictive "consisting of" and that this language resulted from a series of narrowing amendments during prosecution to overcome rejections based upon prior art. The District Court found additional support from its construction based on the distinction between "a" and "at least one" in the claim language and from the specification, which contained repeated references to solutions made from a single sodium phosphate, but never two different sodium phosphates.

The Federal Circuit agreed with the lower court's construction of "a sodium phosphate" and its analysis of the claim language, specification and prosecution history to support a construction limiting the language to a single type of sodium phosphate. With respect to the use of the word "a," which generally means "one or more" in open-ended claims containing the transitional phrase "comprising," the Federal Circuit noted this rule did not apply "when the specification or the prosecution history shows that the term was used in its singular sense." The Federal Circuit rejected Norian's arguments that "a sodium phosphate" should be construed to mean a solution containing dissociated sodium ions and phosphate ions because it was inconsistent with the claim language and statements by the patentee during prosecution. Further, the appeals court found Norian's argument distinguishing the prior art cited during prosecution on other grounds unconvincing, stating:

[T]here is no principle in patent law that scope of a surrender of subject matter during prosecution is limited to what is absolutely necessary to avoid a prior art reference.... To the contrary, it frequently happens that patentees surrender more through amendment than may have been absolutely necessary to avoid particular prior art.

The Federal Circuit also rejected Norian's argument that by defining the solution of the asserted claims in terms of the ingredients used to make the solution, the lower court had improperly converted a product claim into a product-by-process claim, without applying the legal principles applicable to such claims. In finding the claim was not in product-by-process form, the Federal Circuit found that the patentee had characterized the solution in terms of its components and that the evidence before the lower court (including the specification) showed that to be a conventional means of describing the solution, and noted "because the patentee chose to describe the solution in that fashion, the claims remained product claims, but their scope was limited to the designated ingredients from which the claimed solution was made."

The Federal Circuit proceeded to affirm the District Court's reliance on prosecution history estoppel to foreclose Norian's efforts to prove infringement under the doctrine of equivalents. Following the Supreme Court's guidance in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), the Federal Circuit found that arguments made during prosecution of the '065 patent disclaimed solutions made from multiple types of sodium phosphates. This narrowing of claim scope created a presumption that the patentee surrendered, for purposes of the doctrine of equivalents, all subject falling between the scope of the original claim and the scope of the claim as amended. Because Norian failed to rebut the presumption or show that any of the exceptions under Festo applied, the Federal Circuit affirmed the lower court's finding of no infringement under the doctrine of equivalents.

For the full opinion, see: http://fedcir.gov/opinions/05-1172.pdf

In an October 18, 2005 opinion, the Federal Circuit affirmed the United States District Court for the Central District of California's dismissal of MedImmune's patent invalidity suit under the Declaratory Judgment Act, as well as MedImmune's antitrust and unfair competition counts against the three defendants.

The patented technology at issue related to the use of cell cultures to manufacture human antibodies. Defendants Genentech, Inc. and the City of Hope are the owners of U.S. Patent Nos. 4,816,567 ("Cabilly I patent") and 6,331,415 ("Cabilly II patent"). The Cabilly II patent issued in December 2001, 11 years after the inception of a protracted interference proceeding between the owners of Cabilly II and Celltech R&D, Ltd., the owner of U.S. Patent No. 4,816,397 ("Boss patent"). Since 1997, plaintiff MedImmune was licensed by Genentech under the Cabilly I patent and, by the terms of that agreement, received a license under the Cabilly II patent. After issuance of Cabilly II, Genentech advised MedImmune that the MedImmune product Synagis® was covered by Cabilly II and, therefore, subject to royalties in accordance with the license terms. MedImmune objected and filed a suit seeking to have the Cabilly II patent declared invalid or unenforceable under the Declaratory Judgment Act, 28 U.S.C. § 2201.

The District Court held that MedImmune, as a licensee in good standing and not in reasonable apprehension of suit, could not bring a declaratory action as there was no "case of actual controversy" as required by the statute. The Federal Circuit affirmed and rejected MedImmune's argument that under Lear, Inc. v. Adkins, 395 U.S. 653 (1969), MedImmune had the absolute right to challenge the validity of enforceability of the patent regardless of whether or not it breaches the license. While recognizing that Lear put to rest licensee estoppel and a defaulting licensee could raise invalidity as a defense, the three-judge Federal Circuit panel distinguished Lear by noting that MedImmune was not a defaulting licensee and that the question of whether a licensee in good standing could satisfy the "actual controversy" requirement of the statute was never addressed.

Furthermore, the Federal Circuit rejected MedImmune's public policy argument that the public interest was served by permitting it to attack the validity of the Cabilly II patent. Instead, the appeals court framed the public policy issue in terms of the purpose of the declaratory judgment procedure, which is to permit one side to initiate a legal action where the interest of the other side to the dispute is served by delay. Further, following its earlier decision in Gen-Probe, Inc. v. Vysis, Inc., 359 F.3d 1376 (Fed. Cir. 2004), the Federal Circuit noted the inequity to the patent owner who, having contracted away its right to sue, remains at risk of attack on the patent whenever the licensee chooses while the licensee retains its license and royalty rate should the attack fail. As stated by the Federal Circuit, "This imbalance distorts the equalizing principles that underlie the Declaratory Judgment Act." The Federal Circuit proceeded to distinguish cases from other circuits that MedImmune contended supported the proposition that a licensee need not terminate the license to gain declaratory standing. The Federal Circuit noted that in each of the cases cited there was an additional factor meeting the "actual controversy" statutory requirement necessary to invoke the Declaratory Judgment Act.

MedImmune also argued that the settlement between the defendants Genentech and Celltech concerning the interference proceeding was collusive and fraudulent, alleging antitrust and unfair competition violations, and that this provided an independent basis to attack the validity of the Cabilly II patent. The District Court disagreed, holding that the settlement between the two defendants was protected by the Noerr-Pennington doctrine, which permits collaboration among competitors to petition the government to take action (e.g., an interference proceeding) that may restrain competition without incurring antitrust liability by the act of collaborating. The Federal Circuit concurred with the District Court, but opined that the defendants joint communications of the terms of settlement to a court and a joint petition to the PTO to implement the court's judgment did not require protection under the Noerr-Pennington doctrine, as the defendants were only doing what they were obligated to do under the law.

Finally, MedImmune argued that if the Federal Circuit affirmed the District Court's holding on lack of standing under the Declaratory Judgment Act to challenge the validity of the patent, the antitrust and unfair competition counts should be transferred to the United States Court of Appeals for the Ninth Circuit. The Federal Circuit disagreed, stating that the Federal Circuit must exercise jurisdiction of all the issues of a case when the complaint includes any issue exclusively assigned to the Federal Circuit. Only when patent claims are included to manipulate the direction of the appeal or are eliminated at the threshold of the pleading stage is the appeal properly taken to the regional circuit.

For the full opinion, see: http://fedcir.gov/opinions/04-1300.pdf

For more information, please contact Brian McQuillen, a partner in the Intellectual Property Practice Group of Duane Morris' New York office.

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