O CT O BER 1 9 9 9 Last The Federal Circuit month at M ont h at a Glance “TWO TUBES OR NOT TWO TUBES . . . THAT IS LIM ITATION FROM PREFERRED EM BODIM ENT THE QUESTION” IM PROPERLY READ INTO CLAIM S Arguments made during prosecution history restrict Summary judgment of noninfringement vacated interpretation of claims and application of doctrine based on faulty claim construction that improperly of equivalents. E lkay Mfg. Co. v. E bco Mfg. Co. , No. imported limitation of preferred embodiment into 98-1596, 99-1276 (Fed. Cir. Sept. 15, 1999) . . . .1 claims. Bickerstaff v. Dr. Shrink, Inc. , No. 99-1091 (Fed. Cir. Sept. 3, 1999)(nonprecedential CLAIM S ARE CONSTRUED TO COVER DISCLOSED decision) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .7 EM BODIM ENTS Dictionary definitions of claim terms are rejected given examples in written description. Robotic ENABLEM ENT FACTORS APPLY TO BOTH ng’g, Inc. , No. 98-1477 (Fed. EX PARTE AND INTER PARTES ANALYSES Vision Sys., Inc. v. View E Cir. Sept. 3, 1999) . . . . . . . . . . . . . . . . . . . . . . .2 In re Wands factors, when applied from the proper temporal perspective are a useful methodology EXPLOSIVES PATENT “BLASTED” BY PRIOR ART for determining enablement in either ex parte Prior art anticipates patent claims upon showing of prosecution or inter partes litigation context. inherent anticipation, even if one skilled in the art nzo Biochem, Inc. v. Calgene, Inc. , No. 98-1438 E would not have appreciated that the prior art pos- (Fed. Cir. Sept. 24, 1999 . . . . . . . . . . . . . . . . . . .7 sessed the relevant inherent characteristics. Atlas Powder Co. v. IRE CO Inc. , No. 99-1041 (Fed. Cir. Sept. 7, 1999) . . . . . . . . . . . . . . . . . . . . . . . . . .3 NOT EVERY CLAIM TERM IS A SEPARATE LIM ITATION CONSENT DECREE SURRENDERS RIGHT TO Adjective “ blood” in claim is an insignificant part of CONTEST VALIDITY standardizing solution limitation, such that claim is Unequivocal statement agreeing not to directly not vitiated without it and doctrine of equivalents Washington, DC or indirectly aid, assist, or participate in any action could apply. Nova Biomed. Corp. v. i-Stat Corp. , 202-408-4000 contesting validity surrenders rights to contest No. 98-1460 (Fed. Cir. Sept. 3, 1999)(non- validity in subsequent litigation. Diversey precedential decision) . . . . . . . . . . . . . . . . . . . . .9 colab, Inc. , No. 98-1380 (Fed. Cir. Lever, Inc. v. E Palo Alto Sept. 10, 1999) . . . . . . . . . . . . . . . . . . . . . . . . .4 650-849-6600 SUBSTANTIAL EVIDENCE SUPPORTS WILLFUL, PROSECUTION HISTORY ESTOPS INFRINGEM ENT CONTRIBUTORY INFRINGEM ENT Court affirms summary judgment of noninfringe- Contributory infringement requires knowledge, not ment under the doctrine of equivalents in light of intent. Pollock v. Thunderline-Z, Inc. , No. 98-1191 Atlanta prosecution history. Merck & Co. v. Mylan (Fed. Cir. Sept. 1, 1999)(nonprecedential 404-653-6400 Pharms., Inc. , No. 99-1044 (Fed. Cir. Sept. 3, decision) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .9 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .4 Tokyo NONSENSICAL CLAIM S LACK UTILITY AND BEST M ODE REQUIRES SUBJ ECTIVE INQUIRY 011-813-3431-6943 ENABLEM ENT Best mode analysis requires subjective look at what Properly interpreted claims violate principle of inventor knew. Calabrese v. Square D Co. , No. 98- conservation of mass; thus invalid under 35 U.S.C. 1550 (Fed. Cir. Sept. 13, 1999) (nonprecedential Brussels sections 101 and 112 ¶ 1. Process Control Corp. v. decision) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10 011-322-646-0353 HydReclaim Corp. , No. 98-1082 (Fed. Cir. Sept. 7, 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5 “CINEM ATIC WORK” IS NOT PATENTABLE GUINEA PIGS HAVE HAIRY BACKS SUBJ ECT M ATTER Prior art teaching of irradiation of guinea pig hair Where printed matter is not functionally related to follicles inherently anticipates laser hair depilation substrate, printed matter will not distinguish inven- claim. ME HL/ Biophile Int’l Corp. v. Milgraum , No. tion from prior art. Bloomstein v. Paramount Pictures EDITED BY VINCE KOVALICK 99-1038 (Fed. Cir. Sept. 30, 1999) . . . . . . . . . . .6 Corp. , No. 99-1051 (Fed. Cir. Sept. 3, 1999) (non- precedential decision) . . . . . . . . . . . . . . . . . . . . .11 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 Web site ( www.finnegan.com ).
L A ST M O N T H A T T H E F E D E R A L C I R C U I T “Two Tubes or Not Two Tubes . . . either “ one” or “ more than one,” depending on the context in which the article is used. In addi- That Is the Question” tion, although the use of “ a” and “ an,” when referring to “ feed tube” and “ flow path,” as well J acqueline D. Wright as other language in the claims, suggest a single feed tube with a single flow path for liquid and [J udges: Gajarsa (author), Rich, and Plager] air, the asserted claims also use the open term “ comprising” in their transition phrases. Thus, In E lkay Manufacturing Co. v. E bco the Federal Circuit ruled that the plain meaning Manufacturing Co. , No. 98-1596 (Fed. Cir. Sept. of the above-mentioned claim limitations is not 15, 1999), the Federal Circuit reversed the dis- necessarily limited to a single feed tube with a trict court’s holding that U.S. Patent No. single flow path for both liquid and air. 5,222,531 (“ the ‘531 patent” ) and 5,289,855 Ebco also asserted that the written descrip- (“ the ‘855 patent” ) owned by Elkay tion confirms that the feed tube must be a single Manufacturing Company (“ Elkay” ) are valid and flow path for air and water, since numerous ref- infringed by Ebco Manufacturing Company and erences appear in the specification to “ a feed Ebtech Corporation (“ Ebco” ). Based on a proper tube” and “ the feed tube” and that the figures claim construction, the Federal Circuit concluded show a single feed tube with a single flow path that Ebco’s accused devices did not infringe the for liquid and air. The Court noted, however, asserted claims of the patents either literally or that the written description describes a preferred 01 under the doctrine of equivalents (“ DOE” ), and page embodiment. Since claims of a patent are not the Court consequently vacated the associated limited to a preferred embodiment, unless by damages award. their own language, the Court determined that The ‘531 and ‘855 patents claim “ no-spill” the written description does not conclusively adapters for bottled water coolers that permit establish that the meaning of the claim limita- bottles of water to be inserted into coolers with tions is limited to a single feed tube with a single the cap still on the bottle, thereby eliminating flow path. problems of spillage or contamination. The The Federal Circuit found, however, that the accused devices, Ebco’s WaterGuard I, II, and III prosecution history of the patents showed that no-spill adapters, comprise two concentric tubes Elkay gave up a construction of the feed constructed so that water flows down the inner tube/probe limitation that could include an tube from the bottle into the cooler and air flows apparatus with separate flow paths for liquid and up into the bottle through the annular region air. Specifically, during prosecution, the formed by the two tubes. Examiner had rejected claims pursuant to 35 The claim construction at issue centers on U.S.C. section 103, based on two patents. the claim limitations of “ an upstanding feed tube Importantly, one of those patents (“ Krug” ) . . . to provide a hygienic flow path for delivering described a beer dispensing apparatus with two liquid from . . . and for admitting air . . . into separate feed tubes, one for pressurized air and said container” in claims 1 and 7 of the ‘531 one for beer. patent and claim 1 of the ‘855 patent. When Elkay responded to the Examiner’s rejection interpreting these limitations, the district court by distinguishing Krug on the ground that Elkay had stated that the article “ an” does not pre- claimed a flow path for delivering liquid and air. clude a separation of the air and water flow ( i.e. , In addition, Elkay did not respond to the two tubes) or otherwise require the intermin- Examiner’s Statement of Reasons for Allowance, gling of air and water within the feed tube ( i.e. , where the Examiner wrote that he had allowed one tube). claim 7 in the ‘531 patent because he under- On appeal, Ebco argued that the normal, stood the claim to describe a single feed tube accepted meaning of the use of the articles “ a” with a single flow path for both liquid and air. and “ an” requires that the limitations be con- Therefore, the Federal Circuit concluded that strued as describing one feed tube with a single Elkay had disavowed a potential interpretation of path for both air and water. The Federal Circuit the feed tube limitations that would have includ- stated, however, that while “ a” and “ an” may ed separate feed tubes or flow paths. Accord- suggest “ one,” these articles can actually mean ingly, the Court held that the relevant claim limi- L L P . FI N N EG A N H EN D ERSO N FA RA B O W G A RRET T D U N N ER
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