M A R C H 2 0 0 3 Last The Federal Circuit month at Month at a Glance COURT AFFIRMS EQUIVALENTS OF LACK OF SPECIFICITY IN PREVERDICT “MYSTERY SWINE DISEASE” VACCINE JMOL MOTION PROVES FATAL PATENT Preverdict motion for JMOL on inequitable Substantial evidence supports jury verdict conduct and on-sale bar do not support post- that Schering-Plough method to prepare vac- verdict motion for JMOL on obviousness. cine is equivalent to claimed method. Duro-Last, Inc. v. Custom Seal, Inc. , No. Boehringer Ingelheim Vetmedica, Inc. v. 02-1218 (Fed. Cir. Feb. 28, 2003) . . . . . . .5 Schering-Plough Corp. , No. 02-1026 (Fed. Cir. Feb. 21, 2003) . . . . . . . . . . . . .1 EXAMINER’S REMARKS DO NOT NEGATE EFFECT OF APPLICANT’S DISCLAIMER NO FORM OF WORDS IS NECESSARY TO The public notice function of a patent and its EVINCE THE RENDITION OF A JUDGMENT prosecution history requires that a patentee Whether an order constitutes a final judg- be held to what he declares during the prose- ment depends upon whether the judge has cution of his patent. Springs Window Fashions or has not declared his intention in this LP v. Novo Indus., L.P. , No. 02-1309 respect in his opinion. Pandrol USA, LP v. (Fed. Cir. Feb. 13, 2003) . . . . . . . . . . . . .7 Airboss Ry. Prods., Inc. , No. 02-1067 (Fed. Cir. Feb. 21, 2003) . . . . . . . . . . . . .2 “FLORAL HOLDING MATERIAL” NOT Washington, DC PROPERLY CONSTRUED 202.408.4000 CONTRA PROFERENTEM RESULTS IN Drawing inferences of the meaning of a claim PATENT LICENSE term from an Examiner’s silence is not a Atlanta, GA When a contract is ambiguous, the principle proper basis on which to construe a patent 404.653.6400 of contra proferentem , under Delaware law, claim. Prima Tek II, LLC v. Polypap, S.A.R.L. , requires that the agreement be construed No. 02-1164 (Fed. Cir. Feb. 5, 2003) . . . .8 against the drafter who is solely responsible Cambridge, MA 617.452.1600 for its terms. Intel Corp. v. VIA Techs., Inc. , PARTY AND COUNSEL SANCTIONED FOR No. 02-1212 (Fed. Cir. Feb. 14, 2003) . . .3 REHASHING PREVIOUSLY DECIDED ISSUES After several appeals, Phonometrics and attor- Palo Alto, CA COURT SHIFTS DATE FOR POSTJUDGMENT ney ordered to pay $3,000 as sanction for 650.849.6600 INTEREST BY FIVE YEARS making frivolously unmeritorious arguments Plaintiff’s failure to seek reformation of before the Federal Circuit. Phonometrics, Inc. Reston, VA appellate court’s mandate justifies setting v. Westin Hotel Co. , No. 02-1314 (Fed. Cir. 571.203.2700 date for postjudgment interest to district Feb. 12, 2003) . . . . . . . . . . . . . . . . . . . . .9 court’s final judgment following the mandate. Brussels Tronzo v. Biomet, Inc. , No. 01-1585 (Fed. Cir. + 32 2 646 0353 Feb. 12, 2003) . . . . . . . . . . . . . . . . . . . . .4 COURT CORRECTS CONSTRUCTIONS OF FIVE CLAIM LIMITATIONS SUBSTANTIAL EVIDENCE SUPPORTS Simply because a phrase as a whole lacks a Taipei + 886 2 2712 7001 FINDING CLAIMS PRIMA FACIE OBVIOUS common meaning does not compel a Claims to mutated recombinant collagens court to disregard the established meanings were obvious in view of four prior art refer- of the individual words. Altiris, Inc. v. Tokyo ences. In re Berg, No. 02-1120 (Fed. Cir. Symantec Corp. , No. 02-1137 (Fed. Cir. + 03 3431 6943 Feb. 20, 2003) . . . . . . . . . . . . . . . . . . . . .5 Feb. 12, 2003) . . . . . . . . . . . . . . . . . . . . .9 EDITED BY VINCE KOVALICK This publication brings you a synopsis of patent cases decided last month by the United States Court of Appeals for the Federal Circuit based on slip opinions received from the court. You can review and download the full text of each opinion by visiting our website at www.finnegan.com
L A S T M O N T H A T T H E F E D E R A L C I R C U I T Court Affirms Equivalents of The Federal Circuit reviewed the interpre- tation of the term “isolating” in the context of “Mystery Swine Disease” Vaccine the preamble claim language: “A method of Patent growing and isolating swine infertility and res- piratory syndrome virus, ATCC-VR2332, which Deborah J. Acker comprises inoculating the virus on a full or partial sheet of simian cells . . . .” The Court [Judges: Clevenger (author), Mayer, and noted that preamble language will limit the Rader] claim if it recites not merely a context to which the invention may be used, but the In Boehringer Ingelheim Vetmedica, Inc. v. essence of the invention, without which per- Schering-Plough Corp. , No. 02-1026 (Fed. Cir. formance of the recited steps is nothing but Feb. 21, 2003), the Federal Circuit affirmed an academic exercise. In other words, the the district court’s judgment that U.S. Patent PRRS virus is “isolated” each time the virus is No. 5,476,778 (“the ’778 patent”) is infringed propagated into a fresh tissue culture bottle, and not invalid. not just when the virus is initially isolated from The PTO issued Boehringer Ingelheim an infected pig. The Court concluded that the Vetmedica, Inc. (“Boehringer”) the ’778 district court had properly recognized “isolat- patent for methods of growing, isolating, and ing” as part of the definition of the claimed attenuating the virus responsible for Porcine page 01 subject matter and was, therefore, a limitation Reproductive Respiratory Syndrome (“PRRS”) of the claim. after Boehringer discovered a simian (monkey) The Federal Circuit disagreed with the dis- cell line could be used successfully as a host. trict court’s construction that the claim lan- Boehringer filed suit against Schering- guage “until . . . CPE is observed” means Plough Corporation and Schering Corporation “until there is a significant degree of CPE” (collectively “Schering”), alleging that (cytopathic effect). Rather, the Federal Circuit Schering’s vaccine virus, which is grown on a held that the limitation merely defines the similar simian cell line, infringed the method minimum period for incubation of the inocu- claimed by Boehringer’s ’778 patent. The dis- lated cell sheet. Given the infringement analy- trict court denied Boehringer’s motion for a sis, however, this difference in construction preliminary injunction when Boehringer was was considered harmless error. unable to show that Schering’s obviousness Concerning the finding of infringement, challenge lacked substantial merit or that the Federal Circuit agreed that Schering’s irreparable harm would result. VR2525 strain is equivalent to the claimed Following the denial of various motions for strain. Schering argued for no equivalence SJ, the district court considered Schering’s because, when administered to a pig, its virus inequitable-conduct defense separately and will generate a protective immune response to held no inequitable conduct during prosecu- PRRS, while a pig inoculated with Boehringer’s tion of the ’778 patent. At trial, the jury virus develops PRRS. According to Schering, found that Schering had infringed the ‘778 this effect underscored differences in function, patent by equivalence and that the patent was way, or result and precluded a finding of not obvious and, therefore, not invalid. The insubstantial differences between the strains. district court denied Schering’s motions for The Federal Circuit concluded, however, that JMOL or new trial and entered judgment for what happens when the virus is administered Boehringer. to a pig is irrelevant to the assessment of Schering appealed the denial of its motion whether the two viral strains are equivalent in for JMOL, asserting that the district court had the in vitro culture method defined by the incorrectly construed the claims and the jury’s claim. Therefore, the Federal Circuit agreed verdict was not supported by substantial evi- that substantial evidence supported the jury’s dence. Boehringer cross-appealed, asserting verdict of equivalence. an erroneous claim construction. L L P . F I N N E G A N H E N D E R S O N F A R A B O W G A R R E T T D U N N E R
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