Alerts and Updates
Federal Circuit Alert
June 2005
Marking Statute Requires a Reasonable Good Faith Belief Articles Are Properly Marked
Clontech Laboratories Inc. v. Invitrogen Corp., Nos. 03-1464, 04-1099
In 1998, Clontech Laboratories, Inc. brought suit against Invitrogen Corp. (formerly Life Technologies, Inc.) alleging, among other claims, false patent marking. Under 35 U.S.C. § 292, anyone who falsely marks an unpatented product with a patent number or the words "patented" with "the purpose of deceiving the public" shall be fined not more than $500 per offense.
All four patents involved in the suit are generally directed to RNase H deficient Reverse Transcriptase ("RT") polypeptides, methods of using RTs to prepare DNA molecules, and kits for preparing DNA molecules using RTs. Invitrogen markets products containing RTs as SUPERSCRIPT ("SS") and SUPERSCRIPT II ("SSII") and markets a wide variety of cDNA libraries using SSII. The SS and SSII products were marked with all four patents and the cDNA libraries were marked with some of the patents at issue.
The parties contested whether the four patents at issue covered Invitrogen's many cDNA library products and whether the SS and SSII products failed to meet the "substantially no RNase H activity" limitation of this family of patents. In a published decision by Judge Sue L. Robinson of the U.S. District Court for Delaware, 273 F.Supp. 2d 780 (D. Del. 2003), the district court found that certain test results in 2000 put Invitrogen on notice that its products were not covered by the patents in suit and that Invitrogen's failure to correct its mistaken mismarking constituted "deceptive intent." The district court then held Invitrogen liable for false patent marking. Invitrogen appealed, arguing that the district court miscomprehended the legal standard under 35 U.S.C. § 292 and committed a clear factual error in its interpretation of the test results.
In a May 5, 2005 decision by Circuit Judge Raymond C. Clevenger III, the three-judge panel from the Federal Circuit initially noted only one prior decision from the court that substantively addressed the statute. In that case, Arcadia Mach. & Tool, Inc. v. Sturm, Ruger & Co., 786 F.2d 1124 (Fed. Cir. 1986), the Federal Circuit affirmed without discussing the text of the statute. Describing the issue raised by Invitrogen as a question of "virtual first impression," the Federal Circuit rejected a strict liability approach to mismarking and held that a plaintiff seeking to establish false patent marking must show by a "preponderance of the evidence that the party accused of false marking did not have a reasonable belief that the articles were properly marked (i.e., covered by a patent)."
With respect to the case at hand, the Federal Circuit framed the issue as whether the test results from 2000 "should have disabused Invitrogen of any good faith belief it harbored concerning" whether the SS and SSII products were covered by the patents. Viewing the testimony and evidence as a whole, the Federal Circuit concluded that the district court erred and that Clontech had failed to satisfy the preponderance standard with respect to the SS and SSII products. However, the Federal Circuit did affirm the district court's finding that Invitrogen falsely marked its cDNA library products, stating: "[b]eyond blind assertions of good faith, Invitrogen does not direct this court to trial evidence that it had an objective good faith belief that its cDNA products are patented as that term is used in section 292."
Link to this Federal Circuit opinion: http://fedcir.gov/opinions/03-1464.pdf
Defendant's Own Expert Relied on to Reverse Summary Judgment of Invalidity
Space Systems/Loral, Inc. v. Lockheed Martin Corp., No. 04-1501
In an April 20, 2005 decision, the Federal Circuit overturned a June 2004 decision by Judge Susan Illston of the U.S. District Court for the Northern District of California. The district court found a patent on technology for maintaining the position of satellites invalid for violating the written description requirement of 35 U.S.C. §112.
Space Systems/Loral, Inc. ("Loral") sued Lockheed Martin for infringement of a patent directed to a method for maintaining the orientation and position of a satellite in space. Satellites in orbit tend to be pulled out of their proper position by the gravitational forces of the sun, earth and moon. Consequently, satellites conduct "station-keeping maneuvers" to maintain proper position by firing their thrusters, based on measurements of their position. However, these station-keeping maneuvers often overcorrect or introduce new errors in position and orientation, thus requiring a second firing of the thrusters to correct the errors of the first firing.
The Loral patent is directed to a method of reducing the fuel consumption and, therefore, increasing the life of the satellite by improving the efficiency of the corrective procedure during station-keeping maneuvers. Claim 1 of the patent defines a multi-step procedure in which the satellite first estimates the probable correction based on historical data from prior station-keeping maneuvers, conducts a first firing and then measures the remaining actual error in its position, adds the actual error to the historical error, and conducts a second firing.
On Lockheed Martin's motion for summary judgment, the U.S. District Court for the Northern District of California adopted Lockheed Martin's position that the asserted patent was invalid for failure to comply with the written description requirement on the grounds that the specification did not adequately describe "the second step in which the satellite calculates the position after the first firing and performs the second firing of the thrusters."
On appeal, the Federal Circuit reversed the district court's finding of invalidity. In a decision written by Circuit Judge Pauline Newman, the three-judge panel from the Federal Circuit noted that experts for both sides identified the same structure in the specification for performing the second step and concluded the specification sufficiently described the invention claimed in Claim 1. The Federal Circuit rejected Lockheed Martin's contention that Loral's expert testimony was "conclusory," noting that Loral's expert was quite specific in identifying and explaining the supporting structure in the specification. Further, the Federal Circuit put significant emphasis on the fact that Lockheed Martin's own expert "in cross-examination admitted that a person skilled in the art in this field of science would locate the second step" in the specification.
Link to this Federal Circuit opinion: http://fedcir.gov/opinions/04-1501.pdf
Construction of Ambiguous Claim Term Limited by Embodiment in Specification
Rhodia Chimie and Rhodia, Inc. v. PPG Industries Inc., No. 04-1246
In June 2001, Rhodia, an international chemical company, sued PPG for infringement of a patent covering silica particulates used as a filler to reinforce elastomeric products such as automobile tires. Rhodia identified three different PPG products that it alleged infringed the asserted patent. Judge Kent A. Jordan of the U.S. District Court for Delaware granted PPG's motion for summary judgment of non-infringement for all three products. Rhodia appealed the grant of summary judgment and, in particular, the district court's rulings on claim construction and the exclusion of certain evidence.
Conventional elastomeric fillers available in 1980 - when the initial application that led to the asserted patent was filed - were inherently dusty and did not flow easily. The Rhodia patent was directed to an improvement to granulated silica and silica powders in which the silica claimed in the patent was "dust-free and non-dusting" and had an "essential spheroidal" geometry of a certain mean particle size and morphology that distinguished it from the prior art.
The primary disputed claim term at issue before the Federal Circuit was the construction of the limitation "dust-free and non-dusting." The district court defined the term according to a German industrial test standard - the DIN 53 583 standard - for measuring the level of dust formation associated with silica particulates which was repeatedly referenced in the specification. In an April 11, 2005 decision written by Circuit Judge Arthur J. Gajarsa, the Federal Circuit affirmed the construction adopted by the lower court and rejected the proposed constructions of both parties.
PPG asserted that the term "dust-free and non-dusting" should be interpreted to literally mean "no dust cloud whatsoever." The Federal Circuit agreed with the district court's rejection of PPG's literal construction because it would not read on the preferred embodiment described in the specification. The Federal Circuit reiterated its prior statements that such a construction would "rarely if ever [be] correct" and would require "highly persuasive evidentiary support." The Federal Circuit proceeded to conclude that the specification, prosecution history and prior art contained no such "highly persuasive evidentiary support."
The Federal Circuit also rejected Rhodia's construction of "dust-free and non-dusting" to mean "very low dust." While not expressly endorsing the reasoning of the district court for rejecting Rhodia's proposed construction, Circuit Judge Gajarsa noted without criticism the district court's concern that Rhodia's construction was a relative phrase that would not meet the statutory requirement that the claims "particularly point out and distinctly claim the subject matter which the applicant claims as his invention" as required under 35 U.S.C. §112 ¶ 2. Further, the Federal Circuit agreed with the district court that the term was ambiguous and that Rhodia's proposed definition was a "relative" phrase that could only be understood by "comparison to the prior art" and proceeded with examining the description in the specification of the tests selected to illustrate the advantages of the invention over the prior art.
The Federal Circuit concluded that because the only measurements of dust in connection with the claimed invention "were articulated in terms of the DIN 53 583 standard, the district court properly incorporated that articulation into its construction of the term 'dust-free and non-dusting.'" The Federal Circuit found that this construction did not contravene the basic claim construction principle that limitations from the specification should not be imported to the claims, because of the exception to this rule where a term is "so amorphous that one of skill in the art can only reconcile the claim language with the inventor's disclosure by recourse to the specification," quoting Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998).
Link to Federal Circuit opinion: http://fedcir.gov/opinions/04-1246.pdf
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