The Sughrue Review Volume 1, Issue 5 Euclid Chemical Co. v. Vector Corrosion Technologies, Inc . June 1, 2009 Federal Circuit, 2008-1170 (April 1, 2009) signment is ambigu- patent was issued on April 17, Inside this issue: In this case, the Federal Circuit ous requiring that 2001, which was before the date of addressed whether a patentee can extrinsic evidence be the Assignment. Further, the As- assign the rights of a patent not Euclid Chemical Co. v. 1 considered to deter- signment referred to another is- Vector Corrosion Tech- mentioned in the language of an mine the intent of the sued patent (U.S. Pat No. 6,033,553) assignment. Assignment. Accord- expressly. In Re Marek Z. Kubin and 1-2 ingly, the case was Raymond G. Goodwin Euclid, original owner of U.S. Pat- remanded to the Dis- Under Ohio law, the Federal Cir- ent No. 6,217,742 (‘742 Patent) trict court to deter- cuit asserted that when confronted Transcore, LP and TC 2 appealed District Court’s holding mine whether the with an issue of contractual inter- License, LTD. v. that the Assignment at issue unam- Assignment, in light pretation, the role of a court is to Electronic Transaction biguously transferred the ‘742 pat- of the extrinsic evi- Consultants Corporation give effect to the intent of the par- ent to Vector. The Assignment, dence, transferred ties to the agreement. Where a dated December 20, 2001, is the ‘742 patent rights contract is ambiguous, the CAFC signed by Jack Bennett, the sole Every Penny Counts, Inc. 2-3 to Vector. noted that a court may consider v. American Express, Co. inventor, and executed in Ohio. extrinsic evidence to ascertain the The ‘742 patent is a continuation-in- In concurring with parties’ intent, under Ohio law. part of US Patent 6,033,553 (the In re Spirits Int’l, N.V. 3-4 the majority of the ‘553 patent) listed in the Assign- issue of assignment The Federal Circuit further held ment and was issued before the of the ‘742 Patent, that the Assignment includes lan- execution date of the Assignment. Bilski v. Doll 4 Judge Newman stated guage that suggests that it was not The District Court held that the As- that the intent of the intended to effect an assignment of signment unambiguously assigned parties was not nec- the ‘742 patent because the Assign- all rights in the ‘553 patent and any essary in determining whether the rights of the ment specifically assigns all inter- and all continuations-in-part ‘742 Patent were assigned. In reaching this est in and to the inventor’s “US, thereof, which included the ’742 conclusion, Newman states that the Assign- Canadian, and European applica- patent according to the District ment referred to only one patent (U.S. Pat No. tions for patents and issued US pat- Court. 6,033,553) and the technology assigned of all ent”, but this language refers other applications differed from that of the ‘742 merely to “applications” plural and The Federal Circuit disagree, rul- patent. “issued US patent” singular. Since ing that the Assignment was am- such language can be interpreted biguous with respect to the ‘742 as excluding the ‘742 patent, the patent, and noting that the ’742 Federal Circuit declared the As- In Re Marek Z. Kubin and Raymond G. Goodwin Federal Circuit 2008-1184 (April 3, 2009 ) one a conception of a particular DNA BPAI’s ruling stating that the use of con- In this decision, the Federal Circuit ventional tools and techniques to isolate encoding it.” Deuel further stated that provided guidance for determining the obvious to try standard is an inap- and clone DNA sequences that encode when a DNA sequence is obvious propriate test for obviousness. Under under KSR . known polypeptides is obvious in light of Deuel , obvious to try did not constitute the abundant prior art. i obviousness. The Federal Circuit states On appeal from the Board of Patent that the obvious to try standard of Deuel Before addressing the matter at hand, the Appeals and Interferences’ (BPAI) has been “unambiguously discredited” Federal Circuit commented on the In re ruling that Kubin’s and Goodwin’s Deuel decision, which held that by KSR . As KSR held, “the fact that a patent was obvious under 35 U.S.C. § combination was obvious to try might “knowledge of a protein does not give 103(a), the Federal Circuit upheld the
The Sughrue Review Page 2 In Re Marek Z. Kubin and Raymond G. Goodwin (cont.) Federal Circuit 2008-1184 (April 3, 2009 ) show that it was obvious under [35 method for isolating the human NAIL monoclonal antibody specific to the pro- U.S.C.] § 103.” As a result, the Federal DNA sequence, and the Matthew refer- tein for cloning this gene” would have Circuit says that the correct standard is ence’s disclosure of a mouse protein that rendered Kubin’s and Goodwin’s inven- expressed in In re O’Farrell which held activates mouse NR cells and chromoso- tion obvious to a skilled artisan because that “an obviousness finding was appro- mal mapping, cloning, expression, and of the “reasonable expectation of suc- priate where the prior art contained de- molecular characterization of the gene cess” in obtaining Kubin’s and Good- tailed enabling methodology for practic- coding for the NAIL protein. Further, win’s invention from the cited prior art. ing the claimed invention.” Matthew identified a human homologue Kubin and Goodwin claimed DNA mole- for the mouse gene. Based on these cules for the Natural Killer Cell Activa- teachings, the Federal Circuit held that tion Inducing Ligand (NAIL) protein. In “a protein of interest, a motivation to finding the isolated DNA molecule obvi- isolate the gene coding for that protein, ous, the Federal Circuit relied on the and illustrative instructions to use a Valiante reference’s disclosure of a Transcore, LP and TC License, LTD. v. Electronic Transaction Consultants Corporation Federal Circuit 2008-1430 (April 8, 2009) The Federal Circuit held that an uncon- conditional covenant not to sue. The In upholding the District Court’s ruling, the ditional covenant not to sue equates to a covenant not to sue states, “Transcore Federal Circuit stated that the language of license. agrees and covenants not to bring any the covenant not to sue was unambiguous demand, claim, lawsuit, or action against and unconditional language. Therefore, On appeal from a grant of summary Mark IV for future infringement.” Mark the sale by Mark IV was authorized, and judgment in the Northern District of IV later sold the technology claimed in TransCore’s rights were exhausted with Texas, in favor of Electronic Transaction three of the patents listed in the agree- respect to the three patents listed in the Consultants Corporation (ETC) finding ment and one patent not yet issued for settlement agreement. As for the later that installation of a patented product installation by the Illinois State Toll High- issued patent, the Federal Circuit found an was not infringing due to a settlement way Authority System which was tested implied license with a scope of rights of agreement with TransCore, the Federal and run by ETC. TransCore then sued that of the three other patents because the Circuit upheld the summary judgment ETC claiming infringement of their pat- remaining patent had definable property ruling. ents. ETC responded with a motion for rights . summary judgment claiming that their TransCore originally sued Mark IV for activity was permitted under the infringing several of its patents related TransCore-Mark IV settlement under the to automated toll collection systems. doctrines of patent exhaustion, implied The suit was resolved through a settle- license, and legal estoppel. ment agreement which included an un- Every Penny Counts, Inc. v. American Express, Co. Federal Circuit 2008-1438 (April 30, 2009) retail sales transactions into predeter- Value Solutions, Inc. Every Penny This case is an appeal form the District mined charitable or savings accounts. Counts, Inc. (EPC) appeals. EPC’s pat- Court’s ruling of non-infringement by ent at issue concerns a method for do- appellees, American Express Co., Visa During the Markman hearing for claim nating excess cash to charities and sav- U.S.A., Inc., Green Dot Corp MasterCard construction in the District Court, the International, Inc., First Data Corp., ing accounts and an automatic donation claim term at issue was “excess cash.” system for contributing excess cash from Valutec Card Solutions, LLC, Incomm Holdings, Inc. and Comdata Stored
Recommend
More recommend
