Plaintiff Trebor appeals from the grant of summary judgment for non-infringement in favor of defendants JL Gory d/b/a The Airline by J. Sink.  Plaintiffs patents are directed to a quick release diving belt for scuba divers and the like.

A relatively straight forward claim construction analysis of 6,132,142 and 6,712,557.  Claim 15 of the ’142 is illustrative:

A dive belt, comprising:

a body member having a first end and a second end, said body member attached to a body area of a diver;

means for removably securing said first end of said body member to said second end of said body member;
at least one weight means removably secured to said body member and positioned on said body member for rapid removement; and

means for quickly releasing said weight means from said body member;

wherein said body member adapted to remain attached to the body area after said weight means are released.

The court gave a relatively narrow construction to these terms (in bold) and noted that he would find the claims invalid under § 103 if construed broadly as urged by Trebor.  As it was, the court declined to find the claims invalid given his finding of non-infringement.

2011-1208 SJ Opinion

2010-1151 Taylor Brands v.  GB II Corp

Patentee Taylor appeals from the order of Judge Dennis Inman granting GB II summary judgment of non-infringement.  The case involves U.S. Patent No. 6,651,344 which is generally directed to a spring assisted opening knife.  At issue was the claim term “a set block situated at one side of the said blade” and whether the accused knife’s lack of a side set block could infringe.

In claim construction, just like dream analysis, sometimes claim term simply require just what it says.  This appears to be case here based on the Court opinion.

The claims are directed to a spring-assisted opening knife in which the knife blade is set on a pivot and a spring (located in the knife handle) applying tension at the knife base.  When released, the spring pushes on the knife base causing the knife to pivot into the open position.  At issue is the “set block limitation” from claim 1, the only independent claim:

a set block situated at one side of the said blade adjacent to the pivotable conjoinment position of the said handle, with the said set block having a detent notch in the circumferential edge at the confluence of its maximum outer diameter and minimum outer diameter such that when the said blade is drawn out of and extended from the said receiving slot, the said detent notch faces the opposing end of the said receiving slot

The set block is item 7 in the drawing.

GB II’s knife, however, did not have a set block at one side of the blade, but instead used the knife blade base itself.  The court found that the phrase “at one side” actually meant “at one side” and found no literal infringement. As for equivalents, the Court invoked the “all limitations rule”–that equivalents cannot be applied so broadly as to effectively eliminate the limitation altogether–and found that using the knife base and omitting the side set block could not be the equivalent of having a side set block.

2010-1151 SJ Order

2010-1104 Takeda v Teva

Takeda and Ethylpharm appeal from the judgment following a bench trial before Judge Sue Robinson that Teva's ANDA filing for a generic form of PREVACID Solutab^tm does not infringe 5,464,632 related to a pharmaceutical formulation for an oral disintegrating tablet.  These tablets allow the oral administration of an active ingredient in tablet form but without the typical requirement of water to assist in swallowing. 

The claim limitation at issue provided "wherein said mixture of excipients comprises a disintegrating agent and swelling agent."  The court (Opinion, pp. 9-13) construed this as requiring at least one substance that causes disintegration and at least one substance that causes swelling.  The court further concluded that these must be different agents.  The court also discussed the distinction made in the specification and prosecution history between agents that "cause" disintegration versus those that merely "facilitate" it.

Turning then to infringement, the court found that the ANDA's disintegrating tablet mechanism–a product known as STARLAC from Meggle Gmbh and Roquette Frères, did not infringe.  STARLAC offers rapid disintegration through a combination of starch and lactose.  After sifting through the testimony of competing experts, the court found that this combination did not infringe (id. at 13-17).  Lactose is not a swelling agent and, because of prosecution history statements and perception in the art, could not be a disintegrating agent.  While starch is a swelling agent and could also possible be a disintegrating agent, the claim did not allow for the ingredient to be both the disintegrating agent and the swelling agent. 

2010-1104 Opinion

2009-1097 Alcon Inc. v. Teva Pharmaceuticals

Defendant Teva appeals from the verdict following a bench trial before Judge Sue Robinson finding that its ANDA to market a generic version of VIGAMOX, a topical ophthalmic solution comprising the active ingredient moxifloxacin hydrochloride, infringes 6,716,830 and that the claims are valid.

A nice summary of the Court's opinion was written up by Andrew Russell over at Delaware IP Law Blog (here).  The Court rejected Teva's claim construction and invalidity arguments.

While the patent claims explicitly referred to moxifloxacin as the active ingredient, Teva argued that the patentee had redefined the term to mean something other than the plain meaning to one of skill in the art.  The Court found that argument unpersuasive and at odds with portions of the specification.  Opinion, pp. 18-21.

The Court also rejected several invalidity arguments, including anticipation.  A prior patent had disclosed a solution with a moxifloxacin concentration of "0.5 to 99.5 wt%," while the ‘830 patent claimed a concentration range of “0.1 to 1.0 wt%.”  Despite the overlap in ranges, the Court found that "range disparity" did not result in anticipation.  Id. at 23-26.  The Court also rejected related obviousness challenges.

2010-1097 Opinion

2010-1096 Biopolymer v. Immunocorp

Plaintiff Biopolymer appeals the grant of summary judgment by Judge Joan Ericksen finding that defendants did not infringe 5,702,719, related to an animal nutritional supplement with yeast cell wall extract.

The case involved 14 patents but, following the grant of partial summary judgments all around, the parties settled and dismissed all of the claims–except those related to the '719.

The relevant claim language specified purified beta (1,3) glucan "having a particle size of about 1.0 microns or less."  The question was whether "having" was open, thereby allowing some larger particle sizes, or closed such that all of the particles had to be at about or below the claimed size.

Basing her ruling on the intrinsic evidence, Judge Ericksen concluded it was closed and then found that the undisputed evidence showed that defendants' IMMUTOL and IMMUPET products did not infringe due to the size limitation. 

The prosecution history was particularly compelling to the Court as the applicant successfully argued that the relative small size of the invention distinguished it over otherwise invalidating prior art.  The Court's analysis of the "having" construction appears on pages 22-27.

Standing.  Although standing may not come up during appeal (it would have to be a Immunocorp cross-appeal), it was contested as to whether Biopolymer even owned the '719 patent–a judgment by a Texas state court in 2008  decreed that Immudyne, Inc. was the owner of the '719 and not Biopolymer.  However, because that judgment occurred after the Minnesota action was filed, the Court, based on Arachnid, Inc. v. Merit Industries, Inc., 939 F.2d 1574 (Fed. Cir 1991), held that the post-filing judgment in another case did not retroactively deprive Biopolymer of standing in this case.

2010-1096 SJ Order

2008-1392 Trading Tech Int'l v. eSpeed

Summary of Argument from plaintiff Trading Technologies
International, Inc.  Paul H. Berghoff, Leif R. Sigmond,
Jr., Matthew J. Sampson, Michael D. Gannon, S. Richard
Carden, Jennifer M. Kurcz and Paul A. Kafadar of McDonnell
Boehnen, Hulbert & Berghoff LLP, Chicago; and Steven F.
Borsand of Trading Technologies International, Inc., on brief.

The heart of the dispute is the meaning of the claim term
“static.” This term is explicitly and unambiguously defined in the patent
specification as:

The values in the price column are static; that is, they do
not normally change positions unless a re-centering command is received …

Instead of simply adopting this clear definition, the court
erred by construing “static” much more narrowly by requiring that the values in
the price column:

never change positions [which the court interpreted as
precluding “any movement”] unless by manual re-centering or
repositioning.

There is no support in any of the intrinsic evidence (or
extrinsic evidence for that matter) for such a narrow reading of static. As
such, this Court should vacate the district court's construction and adopt the
definition set forth in the patent.

The court also erred in ruling that Dual Dynamic and
eSpeedometer do not literally infringe. This ruling was based solely on the
court's improper construction of “static.” Under its construction, any product
that has a risk of automatic re-centering (which cannot be turned off) does not
literally infringe the patents-in-suit. However, the proper construction of
static is not limited to any particular type of re-centering and thus
encompasses both manual and automatic re-centering. Therefore, these products
literally infringe the patents-in-suit.

Furthermore, the court improperly barred TT from asserting
DOE against eSpeedometer¹⁷ by ruling that “static” was narrowed by
amendment during prosecution.¹⁸ However, to reach this conclusion the
court did not apply its narrow construction of “static” that it used to find no
literal infringement. Rather, the court construed “static” broadly for purposes
of its estoppel analysis – in conflict with its Markman ruling. This
was error because once a claim term is construed, that same construction must
be applied uniformly. Under the court's unduly narrow construction, there can
be no narrowing amendment and thus no estoppel.

¹⁷ The court found that eSpeedometer infringed the
“static” claim term under DOE, even under its unduly narrow construction of
that term.

¹⁸ All of TT's DOE arguments are moot if this Court adopts TT's
construction and finds literal infringement.

Moreover, the court improperly barred TT from asserting DOE
against Dual Dynamic, ruling that doing so would vitiate the “static” claim
term. Vitiation is not applicable because there is only a subtle difference of
degree between the “static” claim element, as narrowly construed by the
district court, and the operation of the price axis in Dual Dynamic. Thus, TT
should not be barred from asserting DOE against Dual Dynamic.



Finally, the
court erred by entering JMOL overturning the jury's verdict of willful
infringement. The court did not and could not challenge the jury's finding that
eSpeed knew or should have known that its product was infringing a valid
patent. The court's ruling was based solely on its mistaken belief that there
was no evidence that eSpeed sold its infringing products after the
patents-in-suit issued. In fact, there is substantial undisputed evidence in
the record that eSpeed continued selling its infringing product after the
patents issued and that it had the ability to pull off the market existing
infringing product. Accordingly, the JMOL ruling should be reversed.

TT states that it “commercialized the invention in a product
called MD Trader, and began selling it around Labor Day of 2000 as part of TT's
X_Trader software suite.” (TT-Br.8) In fact, however, TT first commercialized
the invention of the Patents-in-Suit much earlier, selling custom software
embodying it to Brumfield, then one of the world's busiest futures traders, who
used it in his proprietary trading and kept it as the “toppest of toppest of
secrets that you can imagine,” until, after investing millions of dollars in
TT, he concluded that there might be bigger rewards in going the “patent
route.”



Brumfield and TT's decision to exploit the invention as a trade secret
until it became more financially advantageous to enter the patent system has
critical implications for the validity and enforceability of the
Patents-in-Suit.



First, more than one year passed between TT's commercial sale
of the custom software embodying the invention to Brumfield and its filing of
the Provisional on March 2, 2000, and the sale is therefore a §102(b) bar.



Second,
TT has stipulated that the Patents-in-Suit are invalid due to Brumfield's
intervening public use if they are not afforded the benefit of the Provisional
filing date. Every Asserted Claim includes the limitation “single action of a
user input device,” a term that does not appear and is not defined in the
Provisional. The court construed it broadly, paraphrasing an ad hoc definition
that was first set forth in the Non-Provisional expressly “for the purposes of
the present invention.” This broad construction -“an action by a user within a
short period of time that may comprise one or more clicks of a mouse button or
other input device” is not supported by the narrow disclosure of single mouse
click order entry in the Provisional and therefore, as TT stipulated,
Brumfield's pre-June 9, 1999 commercial use is also a §102(b) bar.



And
just as TT makes no mention of the existence, sale and use of Brumfield's
custom software in its brief, so too did TT fail to disclose this information
to the PTO during prosecution of the Patents-in-Suit. This information would
have been highly material, as it would have prompted the PTO to
consider in the first instance the on-sale and priority date issues now on
appeal. The district court, however, found that this information was not
material at all, and it did not go on to consider abundant evidence that its
nondisclosure was deliberately deceptive.



The “single action of a user input
device” limitation is also, as construed, indefinite, as it has no clear
meaning to a person of ordinary skill in the art, but rather depends upon the
subjective “perception” of each individual user.



Accordingly, this Court
should reverse, mandate the entry of judgment declaring the Asserted Claims
invalid, and remand for further proceedings on inequitable conduct.

2009-1097 Cartner v. Alamo Group

A relatively straight-forward appeal of claim construction related to 5,197,284, claiming a system and method for decelerating a hydraulic motor.  Following construction in defendant's favor, plaintiff Cartner stipulated to invalidity and appealed.

Oral argument is scheduled for Monday, June 1, 2009 at 10:00 A.M., Courtroom 201.

Summary of Argument for plaintiff Cartner.  Philip J. Moy Jr. and Alexander P. Tsarouhas of Fay Sharpe LLP (Cleveland, OH) on brief.

Summary of Argument for defendant Alamo Group.  Steven M. Auvil, Bryan A. Schwartz and Benjamen E. Kern of Benesch Friedlander, Coplan & Aronoff (Cleveland, OH) on brief.

PATracer note: Copies of briefs are available from Kyle upon request.

2008-1482 Purechoice v. Honeywell

Purechoice appeals from the judgment of Judge Ward construing certain claim terms of RE38,985
as ambiguous and the claims invalid for indefiniteness.  The patent
relates to a remote environmental monitoring system that collects air
quality data about a site.  We previously covered the case here, as did Michael Smith from EDTexweblog.

Oral argument is scheduled for Tuesday, March 31, 2009 at 10:00 A.M., Courtroom 203.  When it becomes available, an mp3 of the oral argument should be here.

Unless otherwise stated, these summaries are copied from the "Summary of the Argument" sections of the parties' main briefs (blue and red), respectively.

Summary of the Argument from Purechoice.  Bradford P. Lyerla, Donald W. Rupert, Thomas L. Duston, Margaret L. Begalle, Marshall, Gerstein & Borun LLP (Chicago) on brief.

Summary of the Argument from Honeywell: David Stein, McDermott Will & Emery LLP (Irvine, CA); M. Miller Baker, McDermott Will & Emery (Washington, D.C.) on brief.

The pdfs are too large to upload. If you want a copy of the briefs, send me an email and I will try and send them to you.

2009-1146 Schindler Elevator v. Otis Elevator
SD/NY 06-5377
Judge Colleen McMahon

Plaintiff Schindler appeals from Judge Colleen McMahon's grant of summary judgment of non-infringement to Otis.  Schindler's patent, 5,689,094, relates to a destination dispatching elevator (such as one where the passengers do not press any buttons on-board the elevator) and was asserted against Otis's elevators at 7 World Trade Center.  The claims generally require an information transmitter carried by the passenger and a recognition device, terms the court construed to operate "without requiring any sort of personal action by the passenger" (other than merely walking in proximity to the elevator).  The 7WTC elevator system assigns floor destinations based on (i) tenant's building IDs, an RFID card; (ii) passenger input to a keypad or (iii) building security.  Because each requires action by the passenger–(i) requires the passenger to remove the ID card and place it close to the reader–there is no literal infringement.  The court found that Schindler did not make any doctrine of equivalents argument.

More reading: SJ Opinion

2009-1147 Aspex Eyewear v. Clariti Eyewear
SD/NY 07-2373
Judge Denny Chin

Aspex appeals from Judge Denny Chin's grant of summary judgment on the defense of estoppel related to allegations of infringement of 6,109,747, a patent directed to clip-on eyewear that attaches to frames via magnets.  Applying A.C. Aukerman Co v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc), the court found plaintiff equitably estopped from asserting the '747.  The elements are:

a.
The patentee, through misleading conduct, leads the alleged infringer
to reasonably infer that the patentee does not intend to enforce its
patent against the alleged infringer. "Conduct" may include specific
statements, action, inaction, or silence where there was an obligation
to speak.

b. The alleged infringer relies on that conduct.

In 2003 Aspex counsel sent cease and desist letters alleging infringement of several patents, including the '747.  When Clariti's counsel requested more information including identification of the claims asserted, Aspex counsel responded as to some patents, but not the '747.  Aspex did write in late 2006 to again raise the '747, and then filed suit in 2007.  The court found undisputed that Aspex mislead (through silence), Clariti's reliance and prejudice. 

More reading: SJ Order

2009-1149 Microstrategy v. Crystal Decisions
D/DE 03-1124
Mag. J. Mary Pat Thynge

Microstrategy appeals from the Order of Judge Mary Pat Thynge granting in part defendant's motion for attorney's fees and expenses under § 285. The court previously found that the asserted claims were either not infringed or were invalid, a decision affirmed by the CAFC.  The fees decision is mixed and based on a claim-by-claim analysis, but the court did find that Microstrategy continued to press its case despite overwhelming evidence of invalidity.  The court used March 2005 as the time at which plaintiff should have stopped–this is the date at which rebuttal expert reports were exchanged.

More reading: Order

2009-1031 Marrin v. Griffin

Patentees' Jeff and Claudia Griffin appeal from Judge George Wu's grant of summary judgment finding claims 1-4 of their 5,154,448 patent invalid under 102 and 103.  The patent relates to a label that allows users to write without using a pen or the like–Marrin is the founder of Etch-It, a company that makes cups and other products with a label on which you can write using your finger.

In this case involving the Griffins I almost went with a photo from Family Guy–e.g.,  Brian scratching something–but I could use a Family Guy shot every day (hmm, now there is a theme for next week).  But how often can you use John Waters, a fellow film maker whose early 1980's Polyester had scratch-and-sniff cards and Divine?

Claim 1, the only independent claim, states:

1. A scratch-off label for permitting a user to write thereon without the use of a marking implement, comprising:

a permanent base having a colored near side which is normally visible to the user and having a far side; and

a
coating of scratch-off non-transparent material having a color which
contrasts with the color of the near side of the permanent base, which
coating is applied directly onto the near side of the permanent base
with sufficient thickness so as to obscure the color of the permanent
base, and which when scratched off reveals the color of the near side
of the permanent base.

The court found the claims invalid as obvious and anticipated using several prior art references.  In doing so, however, the court didn't (at least not in its decision) actually read the prior art on the claims–instead, it merely rejects all of the Griffin's arguments and then finds summary judgment essentially uncontested.

The Griffin's tried to use the claim's preamble (about not needing a "marking implement") to differentiate over the prior art.  However, the court found the language not limiting because it was not relied upon for patentability and thus could not now be relied upon to distinguish over the prior art.

Having lost that argument, the Griffin's then lost their expert, whose opinions all required the preamble language to be limiting.  Accordingly, the court found the expert's opinion immaterial.

The court then concludes:

I would have thought that the court should have at least gone through the prior art and identified where in each the claim limitations could be found.

More reading:

Robert Cohn was once middleweight boxing champion of Princeton. Do not
think that I am very much impressed by that as a boxing title, but it
meant a lot to Cohn.

The Sun Also Rises, Ernest Hemingway