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

Bayer appeals from a stipulated judgment of non-infringement following Judge Saylor’s claim construction of U.S. 5,654,407.  Bayer alleged infringement of SIMPONI^®(golimumab), an anti-TNF therapy for certain types of adult arthritis.

The Court’s decision follows its decision in Abbott Labs. v. Bayer Healthcare, No 09-cv-40002 (D. MAss. Jan., 5, 2009).  Both opinions are below.

2011-1207 Claim Construction

2011-1205 Claim Construction 2

PATalert is tied to the CAFC’s Opinions and Orders webpage, which is usually updated between 11 am and 1 pm US eastern.  Shortly after the court announces the new decisions, our RSS feed will alert you of the decision with case name (hyperlinked to a pdf of the opinion), case number, whether the decision is precedential or not, and the lower court/agency from which the case was appealed.

Please enjoy the service, and please email me if you have any questions, comments or suggestions.

-Kyle

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

Panel A: Monday, March 7, 2011, 10:00 A.M., Courtroom 201

2010-1006 DCT UNIGENE LABS V APOTEX [argued]

2010-7074 CVA ANDRE V DVA [argued]

2010-1367 CIT ZHEJIANG DUNAN V US [argued]

2010-1414 DCT ASTRAZENECA AB V MYLAN LABS [argued]

2010-7127 CVA GRAY V DVA [on the briefs]

2011-3019 MSPB SMITH V TRANSPORTATION [on the briefs]

Panel B: Monday, March 7, 2011, 10:00 A.M., Courtroom 402

2010-7092 CVA AVGOUSTIS V DVA [argued]

2010-1415 DCT SYNOPSYS V RICOH CO [argued]

2010-1451 CIT DELL PRODUCTS V US [argued]

2011-7010 CVA ELAUGOS V DVA [on the briefs]

Panel C: Monday, March 7, 2011, 2:00 P.M., Courtroom 201

2010-5069 CFC CAMILO V US [argued]

2010-1305 DCT MARKEM-IMAJE CORP V ZIPHER LTD [argued]

2010-7100 CVA READ V DVA [argued]

2010-1407 DCT QUICKIE LLC V GREENBERG TRAURIG [argued]

2011-7013 CVA MALONEY V DVA [on the briefs]

Panel D: Tuesday, March 8, 2011, 10:00 A.M., Courtroom 201

2010-5080 CFC JOSLYN V US [argued]

2010-1340 DCT COMPETITIVE EDGE V STAPLES [argued]

2010-7104 CVA ROBERTS V DVA [argued]

2010-1429 DCT INFOSINT SA V H LUNDBECK [argued]

2011-7020 CVA PALMER V DVA [on the briefs]

Panel E: Tuesday, March 8, 2011, 10:00 A.M., Courtroom 402

2010-1354 DCT QUADTECH V QI PRESS [argued]

2010-5086 CFC LUMBERMENS MUTUAL CASUALTY CO V US [argued]

2010-7113 CVA WAGNER V DVA [argued]

2010-1434 DCT WM ORGANIC V A-HARMONY [argued]

2011-7029 CVA PATHAK V DVA [on the briefs]

Panel F: Wednesday, March 9, 2011, 10:00 A.M., Courtroom 201

2010-1320 PTO IN RE RIGGS [argued]

2010-1445 DCT CREATIVE COMPOUNDS V STARMARK LAB [argued]

2010-7140 CVA SICKELS V DVA [argued]

2011-7040 CVA BAKER V DVA [on the briefs]

Panel G: Wednesday, March 9, 2011, 10:00 A.M., Courtroom 402

2010-3085 MSPB MAY V MSPB [argued]

2010-1264 DCT GENETICS INST V NOVARTIS VACCINES [argued]

2010-1455 DCT SEAT SACK V CHILDCRAFT [argued]

2010-5147 CFC SOUTHERN CALIFORNIA EDISON CO V US [argued]

2010-3182 MSPB PROBASCO V AIR FORCE [on the briefs]

Panel H: Wednesday, March 9, 2011, 2:00 P.M., Courtroom 201

2010-1095 CIT DIAMOND SAWBLADES V US [argued]

2010-3131 MSPB BALDWIN V VA [argued]

2010-1394 DCT ALLERGAN V ATHENA COSMETICS [argued]

2010-1399 BCA PARKVIEW ENGRAVING V VA [argued]

2010-3190 MSPB ROYAL V ARMY [on the briefs]

Panel I: Thursday, March 10, 2011, 10:00 A.M., Courtroom 201

2010-1198 CIT HARTFORD FIRE V US [argued]

2010-3127 MSPB GODFREY V TRANSPORTATION [argued]

2010-5123 CFC PACIFIC GAS & ELECTRIC V US [argued]

2010-1402 DCT RETRACTABLE TECH V BECTON DICKINS [argued]

2011-3002 MSPB KNIGHT V MSPB [on the briefs]

Panel J: Thursday, March 10, 2011, 10:00 A.M., Courtroom 402

2010-1211 CIT ARKO FOODS INTL V US [argued]

2010-1357 PTO OMURA V SHAFER [argued]

2010-1395 ITC TIANRUI GROUP CO V ITC [argued]

2010-1424 DCT YANGAROO V DESTINY MEDIA TECH [argued]

2011-3008 MSPB REDFIELD V OPM [on the briefs]

page 2

new

2010-1105 Sun Pharma v. Eli Lilly

Eli Lilly appeals from the grant of partial summary judgment by Judge George Caram Steeh finding that certain claims of its US Patent No. 5,464,826 invalid for double patenting.  The case arose from Sun's ANDA filing seeking to market a generic form of GEMZAR, Lilly's gemcitibine cancer medication.  The matter is on appeal following the entry of this judgment under Rule 54(b).

The prior patent at issue is 4,808,614, titled "Difluoro Antivirals and Intermediate Therefore" and generally discloses certain anti-viral nucleosides.  One of the disclosed (and claimed) compounds is gemcitibine, which the '614 specification further describes as having "excellent oncolytic activity in standard cancer screens.

Sun argued that Lilly obtained the '614 patent for the compound gemcitabine as an anti-viral and anti-cancer drug, then improperly extended its monopoly over the compound by obtaining the '826 patent claiming a method of using gemcitabine to treat cancer.  Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353 (Fed. Cir. 2008); Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373 (Fed. Cir. 2003).  

Lilly countered that it disclosed the anti-cancer use in the '614 patent specification to avert any "best mode" challenges to the validity of the '614 patent, but relied on the anti-viral utility of gemcitabine to obtain the '614 patent. Lilly maintains that, because the anti-cancer use of gemcitabine set forth in the '614 patent specification was unnecessary to support the '614 patent, the anti-cancer use was eligible for later patenting in the '826 patent.  In re Kaplan, 789 F.2d 1574 (Fed. Cir. 1986).

An obvious-type double patenting analysis requires construing the relevant claims of the earlier and latter patents and determining their differences, then determining whether the differences render the claims patentable distinct.  The main contention between Sun and Lilly was whether the court could look to the specification of the '614 patent for the "anti-cancer" disclosure.  (Opinion, pp. 5-8.)

After determining that it could look to the specification, the court found an overlap of coverage between claim 12 of the '614 patent and claims 2, 6 and 7 of the '826 patent render the latter invalid:

Indeed, there is an overlap of the identical "pharmaceutically effective amount" for anti-cancer treatment in the '614 Patent is repeated in the '826 Patent. A "claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use." Pfizer, Inc., 518 F.3d at 1363 (quoting Geneva, 349 F.3d at 1385-86).  Construing Claim 12 of the earlier '612 Patent and Claims 2, 6 and 7 of the later '826 Patent, the court finds they are not patentably distinct as a matter of law.  Pfizer, 518 F.3d at 1363.

It would shock one's sense of justice if an inventor could receive a patent upon a composition of matter, setting out at length in the specification the useful purposes of such composition, manufacture and sell it to the public, and then prevent the public from making any beneficial use of such product by securing patents upon each of the uses to which it may be adapted.

Geneva, 349 F.3d at 1386 (quoting In re Byck, 48 F.2d 665, 668 (CCPA 1931)).

Opinion, p. 8.

2010-1105 Opinion

Vita-Mix has appealed from Judge Patricia A. Gaughan’s judgment of noninfringment and denial of Vita-Mix’s cross-motion for summary judgment of infringement.  Defendants (Basic Holding, West Bend Houswares, Focus Electrics, and Focus Products Group) have cross-appealed the Court’s grant of summary judgment on validity and enforceability and the corresponding denial of their cross-motions on those issues.

Whew!  Let’s just get this out of the way up front (since Judge Gaughan did the same in her opinion)–this case had a ton of motions.  In sharp contrast to Kyle’s on-going series about sealed documents in the Eastern District of Texas, I had more than enough reading material to keep me up late.  (Note to self:  the next opinion that begins "[t]his matter is before the Court upon 15 motions–ten motions for summary judgment and five related motions" goes to Kyle.)   

So what prompted this brief-a-palooza? Smoothies. Well, more accurately, "high-end kitchen blenders."  Vita-Mix is a leading manufacturer of high-end blenders.  And in the interest of full disclosure, I own one.  It’s great for smoothies.  I can pummel any combination of fruit, dairy, and ice into a healthy frozen drink and pawn it off on my kids as a milkshake.  But I digress. 

Perhaps the most interesting factoid about this case is that a dispute over one claim from one Vita-Mix patent–a method for eliminating "air pockets" from a blender–sparked 10 separate summary judgment motions. 

A Little Blending History:

Early Vita-Mix blenders used a
"tamper"–a wooden stick in my vintage
model–to break up air pockets (apparently a detriment to blenders everywhere).  But Vita-Mix was not satisfied with this solution because it was fleeting  Air pockets kept forming; users kept tamping.

Enter Vita-Mix’s U.S. Patent No. 5,302,021.  While looking for a better solution to the air pocket problem, Vita Mix determined that air channels
formed by a "member" associated with the blades caused these dreaded air-pockets.  To block those air channels, Vita-Mix devised and patented a method using a "plunger" inserted into the pitcher of the blender.  In prosecuting the ’021 patent, however, Vita-Mix made it clear that "any action to ‘stir the contents of the pitcher’ is a ‘materially different process" than using its new plunger method for eliminating air pockets.

Claim Construction:

This "stirring" distinction was essential to the Court’s claim construction.  Judge Gaughan construed the disputed claim to exclude any stirring (a method for eliminating air pockets "not including a method of stirring to disperse, dislodge, or break-up an air pocket after it has begun to form.")  In addition, the claim required two other key elements: (1) the device inserted in the blender must be adjacent and above the rotating blades and (2) the device must be free of contact with the blender’s pitcher.  (Click Here to view the entire claim construction.) 

Noninfringement: 

Defendants, including a former Vita-Mix dealer, manufactured and sold a number of blenders with a "Stir Stick" that is inserted into the blender during use.  Setting aside the obvious semantic challenges, Vita-Mix argued that Defendants’ blenders infringed the claimed method when the Stir Stick is inserted into the blender but not used to stir–i.e., the Stir Stick is held stationary or not touched at all.  Vita-Mix alternatively argued that the user could use the Stir Stick as intended and still infringe if all the other elements were practiced.

Judge Gaughan dispensed with the latter argument first–making clear that Vita-Mix disclaimed all stirring operations.  The Court also noted the inconsistency of Vita-Mix’s "stir" theory–it required the user to stir with the Stir Stick  to satisfy one claim element (eliminating "air pockets") but required the user to hold the Stir Stick steady or not at all to satisfy the others ("adjacent and above the blades" and "free from contact").

Vita-Mix’s other argument–I’ll call it the Hold Steady theory–required it to show that using the Stir Stick, without stirring, would eliminate air pockets.  To support its theory, Vita-Mix took a multifaceted approach. 

• Vita-Mix offered expert opinion that the Stir Stick, when inserted in the blender but not held by the user, infringes the claim.  The Court concluded that Vita-Mix’s opinion was hypothetical and, thus, insufficient to overcome a motion for summary judgment. 

• Vita-Mix offered video of the accused blenders on QVC to support infringement.  Judge Gaughan was not moved.  In fact, her opinion notes that the video shows the Stir Stick being used to stir and, at one point, shows the formation of an air pocket. 

• Vita-Mix claimed that the accused blenders’ operation manual teaches the customer to infringe.  The Court again disagreed, citing instructions to "turn," "rotate," and "move" the Stir Stick during blending.

• Finally, without proof of infringement by actual customers, Vita-Mix conducted a survey to determine if users were "likely to infringe."  Vita-Mix’s counsel constructed a survey with categories such as "held stir stick stationary," "didn’t hold stir stick," and "used stir stick to mix a lot."  These categories were used to record how 100+ people used the accused blenders.  Vita-Mix then secured an expert report interpreting that data.  The Court concluded the report should be stricken based on relevancy–in part, because the expert had no way of knowing if the claim limitations were met based on the survey and survey data. 

With no proof of direct infringement, the Court granted Defendant’s motion for summary judgment of noninfringement on Vita-Mix’s direct and indirect infringement claims.

Validity And Enforceability:

The Court dispensed with Defendants’ invalidity defense largely for lack of proof.  It’s not that Defendant’s didn’t have evidence–they had an expert opinion and testimony.  They just didn’t want to cite to it.  This was not lost on the Court.  In denying Defendant’s motion for summary judgment on validity, the Court noted that Defendants’ choice not to cite their expert’s report or testimony "cannot be ignored." 

Judge Gaughan also rejected Defendants’ inequitable conduct claim based largely on the fact that there was simply no evidence of intent and the allegedly withheld reference was cited in another reference before the Patent Office.

Notes:

All said, my 35,000-foot review doesn’t do justice to Judge Gaughan’s mammoth efforts in this case.  For more information, including some very interesting details throughout the footnotes, I strongly recommend reading Judge Gaughan’s opinion.

And, yes, in case you were wondering, there has been a flurry of post-judgment motions, including a motion for attorney fees.  Check back for updates. 

More Reading:

Judge Gaughan’s Summary Judgment Opinion

Counsel:

For Vita-Mix: McDonald Hopkins, Cleveland, OH (Michael Snyder, David Movius, David Cupar, and Ryan Fitzgerald)

For the Basic Holding Defendants: Workman Nydegger,  Salt Lake City, UT (Larry Laycock, David Wright, Robert Aycock, and Clinton Duke), Calfee, Halter & Griswold, Cleveland, OH (Charles Lyon, George Hoskins, and Jennifer Wick) 

The National Institute for Strategic Technology Acquisition and Commercialization ("NITSAC") appeals from Judge David Folsom’s order dismissing its complaint against Ford Motor Company. 

NITSAC is a not-for-profit organization "formed under the auspices of Kansas State University" (home of the Wildcats) for "facilitating the commercialization of new technologies, through the promotion of related research and education."  And in 2000 it received a healthy charitable donation from Ford, the assignment of four patents (U.S. Patent Nos. 5,239,955, 5,319,919, 5,469,777, and 5,554,020).  For its donation, Ford claimed a tax deduction of $26,950,000. 

In 2006, while trying to license the assigned patents, NITSAC learned that Ford had distributed the patented technology to one of its suppliers.  NITSAC granted Ford a non-exclusive license for the donated patents in April 2006, but Ford terminated that agreement several months later.  NITSAC sued Ford for patent infringement in 2008. 

Ford moved to dismiss NITSAC’s complaint, arguing that the parties’ assignment agreement released all infringement claims against Ford.  Further, Ford argued that Fed. R. Civ. P. 12(b)(6) was the appropriate vehicle for dispensing with the case because the sole issue for the Court was a question of law–the interpretation of the assignment agreement under Michigan law. 

NITSAC countered that the release language only excused Ford from liability for claims arising from NITSAC practicing the assigned patents.  NITSAC further argued that a motion to dismiss under 12(b)(6) would be inappropriate because the assignment was ambitious–and thus involved questions of fact that must be resolved under Rule 56. 

Judge Folsom agreed with Ford on both accounts.  The Court held that Ford’s motion was properly considered under Rule 12(b)(6) because the contract language was clear.  Moreover, Judge Folsom found that Ford’s position regarding a release was supported by the plain language in the assignment.  Section 3.3 of that agreement (quoted in Judge Folsom’s opinion) reads:

For its part, [NISTAC] hereby agrees to release [Ford], it [sic] officers, directors, employees and agents, and each of them, from any and all claims which [NISTAC] might otherwise have against any of them by reason of the practice of [Ford’s] Patent Rights by [NISTAC], its licensees or transferees.  

Citing Michigan law, Judge Folsom held that the term "all" means "no exceptions"–thus NITSAC had released Ford.  While NITSAC argued that the release only covered claims arising from NITSAC’s activities, the Court concluded that NITSAC’s reading would render other provisions of the assignment superfluous.  In support, Judge Folsom cited the section just before Ford’s release, Section 3.1:

[Ford] makes no warranties with respect to freedom from alleged infringement of third party patents or freedom from third party infringers, and [Ford] shall not be under any obligation to indemnify or hold harmless [NISTAC] or any licensees or transferees of [NISTAC] against such alleged infringement claims.

Because Section 3.1 addresses the very issue NITSAC claimed was covered by Section 3.3, the Court rejected NITSAC’s interpretation of the assignment agreement.  Judge Folsom then concluded his opinion with a brief but illuminating discussion of the equities:

The Court acknowledges that from NISTAC’s perspective this result appears unfair in that Ford is able to receive a benefit of a tax deduction without having to forsake use of the technology. However, NISTAC has not been deprived of its value in the patents, mainly to license the patents to anyone else, including Ford’s competitors. Moreover, NISTAC received not only rights to an entire patent portfolio, but also $184,000 to pay for the maintenance fees. Therefore, the apparent harshness of this result is significantly mitigated by the benefit that NISTAC might reap compared with the investment it has put into these patents. Moreover, after making a charitable contribution, it would be even more unfair for Ford to be hailed into court, expend significant time, resources, and money in discovery defending a patent infringement action. Thus, while the interpretation of the contract provisions is by no means easy, as a matter of law, the contract language is ambiguous as to the release.

More Reading:

Judge Folsom’s Opinion and Order

Notes:

• Judge Folsom explicitly declined to address the tax implications of the parties’ spat.
• If facing a motion to dismiss in Texas (or the Fifth Circuit), try this:  "It is recognized that a motion to dismiss under Rule 12(b)(6) is disfavored and rarely granted.  Priester v. Lowndes County, 354 F.3d 414, 418 (5th Cir. 2004)." (Page 3 of Judge Folsom’s Opinion)
• Judge Folsom is a two-time graduate of the University of Arkansas–home of the Razorbacks and the inspiration for the title of today’s post.

Counsel:

For NITSAC:  Fulbright & Jaworski, Dallas (Robert M. Chiaviello, Jr. and Brett C. Govett)

For Ford: Shook, Hardy & Bacon, Kansas City (Eric A. Buresh and Holly L. Teeter),  Parker, Bunt & Ainsworth, Tyler (Robert Christopher Bunt)

Since starting PATracer, we have received numerous emails, calls and comments from people wanting to know how we did this, why we did that, or if Josh can really snowboard.

While some questions are best left unanswered (or unasked), we compiled some of the most common queries and PR answers here.

As always, feel free to contact us with any other questions, suggestions, comments or specific requests.

What is PATracer?

Kyle: PATracer’s "mission" is to report on patent litigation appeals at the Federal Circuit.  Primarily this means covering cases from the district court or ITC.  We:

• summarize the proceedings below and hopefully give a preview of the issues to be decided on appeal.  Usually we offer the key orders or documents for download.  This post is done at or near the time the appeal starts;

• cover the briefing with our "In Brief" posts.  Here, we try to make the briefs available for download and provide the parties’ respective "Summary of Argument"–likely a good preview of the arguments and issues to be decided by the CAFC; and

• notice the scheduling of oral argument.

Josh: For cases that we (or our readers) find extra interesting, we might also report on the oral argument, collateral proceedings, etc.

Also, we might post on topics, statistics, trends and other patent litigation items.

Why "Tracer" when your subtitle says "Tracking Patent Cases"–why not PATracker?

Josh: PATracker.com was already registered, and PatentAppealTracker.com won’t fit on our upcoming line of mugs, sweatshirts, mouse pads and toaster cozies.  So it was either PATracer
or Patently Appealing–which we liked, but it somehow seemed too cliché.

Why did you start PATracer?  For all the fame, fortune, and A-list treatment bloggers get?

Josh: Those were my exact reasons.  I have been sorely disappointed.

Kyle: For me, those things were, like, 3rd-5th on the list.

Actually, several reasons and ideas kind of came together for PATracer: (1) we wanted to know
more about what was happening in the patlit biz at the trial court
level; (2) we like to see the writing, strategery (I know its barely a
word!) and procedures tried–successfully or not–by others; and (3)
wanted to know the kind of issues and topics were floating around the
Fed Circuit before the decisions come out.

What are the "tools of the trade" for PATracer?

Kyle: Peet’s coffee (Major Dickason, Garuda and Arabian Sanani), iPod and MacBook Pro.  We use a number of free Web resources like Google Patents and Altlaw.org for cases, statutes, etc.  And we are heavily indebted to our fellow practitioners for providing information and briefs on the cases. 

Josh: Dunkin coffee, a soon-to-be-retired Dell Inspiron, and (according to iTunes) 49.3 days worth of music.  Currently we are using Typepad for the blogging software.  We also have our own server running Mediawiki–this is where we put the .pdf’s and other documents for download.  Hopefully we can do more with the wiki someday a la SCOTUSwiki.

What’s the background image in the site banner?

Kyle: A circuit diagram for a Fender Bandmaster Reverb amp, circa 1969.

Josh: Don’t worry, it’s changing soon.