CAFC Happenings

The CAFC is off to a hot spring training, starting March batting six-for-six off hapless district court pitching and beginning the hit parade by swatting three pro-patentee judgements out of the park.

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Claim Construction: Reversing district court claim construction and vacating preliminary injunction, in claim to garage door opener that required generation of both a trinary code (base 3) and binary code (base 2), CAFC construes "binary code" to mean "binary number" even though district court's construction of term "code" was admittedly its ordinary and accustomed usage, because CAFC "discerned" several countervailing trumps in the specification to the effect that even though the trinary code was stored in binary format within the computer (as it must be), it remained "trinary code" for claim construction purposes, The Chamberlain Group, Inc. v. Lear Corp., nos. 2007-1314, -1467.

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On Sale Bar: Hit parade continues: reversing and remanding summary judgement of infringement, on sale bar triggered before critical date under following conditions. Developer company was hired by contractor company to produce gusset-ruffling machine, verbally agreeing to confidentiality. Prototype price was quoted and price paid for, with prototype being inspected at developer's facility by contractor and never subsequently delivered to contractor. Per CAFC, this was not permissible experimentation but rather a commercial sale triggering the first prong of Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998): "experimentation conducted to determine whether the invention would suit a particular customer's purposes does not fall within the experimental use exception" (a statement of such subtle brilliance that we are dazzled into near- incomprehension); furthermore, the contractor, not the patentee developer, controlled the testing, which the CAFC found to be "dispositive"; second Pfaff prong met because even though prototype at issue was later refined and improved, it was nonetheless suitable for its intended purpose before the critical date; somewhat incredibly given that the court below believed in good faith that the sale was not a bar, CAFC then observed that since the activity in question was after all a pre-critical date offer, it was material to patentability and should have been disclosed to PTO, remanding to district court for finding of intent prong of inequitable conduct; concurring opinion notes "confused status of our current case law" and in helpful clarification explains that "the experimental use doctrine [is not] a free-standing doctrinal exception to a statutory bar, [but rather] is more accurately characterized as a negation of a statutory bar", Atlanta Attachment Co. v. Leggett & Platt, Inc., no. 2007-1188.

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Obviousness: Preliminary injunction vacated because accused infringer of cable support reexamined patent who admitted copying the patented design produced substantial question of obviousness (a combination of one reference considered on reexam with a second reference that triggered a second, apparently on-going reexam, plus testimony about prior art "workmanlike" installation practices that would have produced a "sag" element of the claim); dissent argues that, apropos standard of review for preliminary injunctions, majority "mistakes the law, misplaces the burdens, misconstrues the assumptions, and ignores the district court's discretionary authority and its balance of the equitable aspects", risking a position in the starting lineup for opening day, Erico Int'l Corp. v. Vutec Corp., no. 2007- 1168.

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Doctrine of Equivalents: Missing the home run of a complete reversal by only inches, CAFC reverses in part district court to hold that Festo presumption of surrendered subject matter arising from narrowing amendment to claim to DNA staining is satisfactorily overcome by showing element in question was only "tangential" to accused equivalent (over a dissent); patentee's amendment required "a blocking nucleic acid" while two arguments were given: first, to "promote prosecution" which the CAFC found to be a "clearly nonsubstantive" reason for amending the claim, and second an argument that focused on a method of blocking, not on a particular type of nucleic acid that could be used for blocking, meaning that the equivalent nucleic acid in question was not surrendered because the narrowing amendment was only tangential to it,_The Regents of the University of California v. Dakocytomation California, Inc., nos. 2006-1334, -1452.

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Declaratory Judgement: Reversing district court denial to hear suit for using obsolete “apprehension of suit” standard and developing case law for forum determination post-MedImmune Inc. v. Genentech Inc., 127 S.Ct. 764 (2007) when two actions, one a declaratory judgement (DJ) for patent invalidity/non-infringement by a potential infringer and the other an infringement claim by a patentee are filed in two different forums, CAFC observes "general rule" that favors the forum of the first-filed action, but district courts have discretion to make exceptions. CAFC now holds forth on the reasons that may form a basis for a transfer.

(1) That a declaratory judgement action is "tenuous at best" is now irrelevant because it relies on the now-defunct reasonable apprehension test for granting a DJ;

(2) that second-filed infringement suit by patentee in different forum is broader than the first-filed DJ action (ordinarily militating toward transferring the case to the forum of the second-filed infringement suit) carries but little weight because it is too easy for a patentee to file an artificially broader infringement suit to avoid DJ jurisdiction;

(3) that one forum court or the other may be "invested" or not with the case likewise should not be overemphasized since in light of the new lenient DJ standard, competing lawsuits will be filed within relatively short time frames so that no one forum is likely to be more "invested" in the controversy than another.

(4) Accordingly, the principal "exception" standard that should apply in deciding which forum should be selected when competing DJ and infringement claims are filed in different forums is "convenience" of the parties and witnesses, which per the CAFC is a question the resolution of which is "basically the same as a transfer action under §1404(a)".  According to the CAFC, these "convenience factors" take on added significance in light of MedImmune because the incentives to race for the courthouse, heightened by easier DJ jurisdiction post-MedImmune, are reduced, Micron Technology, Inc. v. Mosaid Technologies, Inc., no. 2007-1080.

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Obviousness-type Double Patenting: Still hot at the plate, CAFC reverses in part and affirms in part a judgement for Pfizer that Teva infringed Celebrex patents. CAFC reverses holding of validity of one of the three patents but upholds liability determination under other two, finding that the third patent, which was a continuation-in-part of an earlier patent, was invalid for obviousness- type double patenting over the earlier patent.  The CIP was filed pursuant to a restriction requirement and recited restricted-out claims but, per the CAFC, the "safe harbor" against an obviousness-type double patenting attack provided by 35 U.S.C. §121 applies only to divisionals, not to other types of continuing applications, Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., no. 2007-1271.