A U G U S T 2 0 0 3 Last Last The Federal Circuit month at month at Month at a Glance PROSECUTION DISCLAIMER MUST BE MERE DISCLOSURE OF POTENTIALLY UNAMBIGUOUS MATERIAL ART DOES NOT AUTOMATICALLY As a basic principle of claim interpretation, LIMIT CLAIMS prosecution disclaimer promotes the public- IDS reference was not admitted prior art and notice function of the intrinsic evidence and was improperly used to import limitations into protects the public reliance on definitive claims to save their validity. Abbott Labs. v. statements made during prosecution. Omega Baxter Pharm. Prods., Inc., No. 02-1400 Eng’g, Inc. v. Raytek Corp. , No. 01-1546 (Fed. Cir. July 3, 2003) . . . . . . . . . . . . . . . . .6 (Fed. Cir. July 7, 2003) . . . . . . . . . . . . . . . . .1 COURT REVERSES SANCTION OF RES JUDICATA DOES NOT PREVENT ATTORNEYS’ FEES INFRINGEMENT SUIT OVER TRADING District court improperly awarded attorneys’ CARDS fees against Plaintiffs and attorneys based on a To be given preclusive effect, a judgment must misunderstanding of the governing trademark be a final adjudication of the rights of the and patent laws. Waymark Corp. v. Porta Sys. parties and must dispose of the litigation on Corp. , No. 03-1012 (Fed. Cir. July 10, 2003) . .2 the merits. Media Techs. Licensing, LLC v. The Upper Deck Co. , No. 02-1555 (Fed. Cir. COURT “SHIFTS” CLAIM CONSTRUCTION July 11, 2003) . . . . . . . . . . . . . . . . . . . . . . . .7 Washington, DC FOR BICYCLE GEAR SHIFT PATENT 202.408.4000 District court improperly read limitations into claims from specification and incorrectly read prosecution-history statements as disclaimers. Atlanta, GA COURT STARTS WITH DICTIONARIES TO 404.653.6400 Sunrace Roots Enter. Co. v. SRAM Corp. , CONSTRUE “HIGH FREQUENCY” No. 02-1524 (Fed. Cir. July 17, 2003) . . . . . .2 The district court did not err in looking to dictionary definitions before consulting the Cambridge, MA PATENT INVALID FOR SALE OF SOFTWARE 617.452.1600 specification or the prosecution history to EMBODYING THE INVENTION PRIOR TO first determine the ordinary and customary CRITICAL DATE meaning of the term “high frequency.” Palo Alto, CA Court has discretion to reach an issue not Intellectual Prop. Dev., Inc. v. UA-Columbia 650.849.6600 decided below where there has been a judicial Cablevision of Westchester, Inc. , No. 02-1248 interpretation of law, pending the appeal, (Fed. Cir. July 21, 2003) . . . . . . . . . . . . . . . . .8 which might materially alter the result. Reston, VA Minton v. National Ass’n of Sec. Dealers, Inc. , 571.203.2700 No. 02-1560 (Fed. Cir. July 29, 2003) . . . . . .4 VALIDITY OF A PROCESS PATENT DOES Brussels PROCEDURAL PROBLEMS PREVENT APPEAL NOT TURN ON VALIDITY OF THE PRODUCT + 32 2 646 0353 The grant of an in limine motion with respect PATENT to damages evidence is not a final disposition of A process yielding a novel and nonobvious a claim that can be certified pursuant to Fed. R. product may nonetheless be obvious; con- Taipei + 886 2 2712 7001 Civ. P. 54(b), but requires Federal Circuit versely, a process yielding a well-known consent pursuant to 28 U.S.C. § 1292(b). product may yet be nonobvious. Torpharm, Ultra-Precision Mfg. Ltd. v. Ford Motor Co. , Inc. v. Ranbaxy Pharms., Inc ., No. 02-1590 Tokyo No. 02-1622 (Fed. Cir. July 28, 2003) . . . . . .5 (Fed. Cir. July 23, 2003) . . . . . . . . . . . . . . . .10 + 03 3431 6943 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 Prosecution Disclaimer Must Be had incorrectly assumed that a laser beam directed inside the energy zone could not Unambiguous at the same time outline that zone. The plain words of the claims permissively Timothy J. May require “at least one laser beam,” indicat- ing that the “means for causing” may act [Judges: Clevenger (author), Michel, on another laser beam to strike inside the and Schall] zone. Further, the claims do not require that the laser beam be both outside and In Omega Engineering, Inc. v. Raytek inside the periphery at the same time. Corp. , No. 01-1546 (Fed. Cir. July 7, 2003), The Federal Circuit also rejected Raytek the Federal Circuit rejected the district Corporation’s (“Raytek”) arguments that court’s claim construction and reversed the Omega had disclaimed during prosecution district court’s SJ of noninfringement. The a laser-sighting system directing a laser Federal Circuit remanded the case with a inside the energy zone. During prosecu- broader claim construction for further pro- tion, Omega had repeatedly insisted that ceedings. its invention differed from the prior art by Omega Engineering, Inc. (“Omega”) precluding appreciable heat from entering owns U.S. Patent Nos. 5,727,880 (“the page 01 the energy zone and affecting the temper- ’880 patent”), 5,823,678 (“the ‘678 ature of the energy zone. While these patent”), and 5,823,679 (“the ‘679 statements narrowed the construction of patent”), which are based on a common the phrase “to visibly outline,” they did not priority application and relate to a laser- preclude projection of light into the interior sighting system for use on infrared ther- of the energy zone. Thus, the disclaimer mometers. was not as comprehensive as Raytek had Claim limitations relating to the outline argued. or periphery of the energy zone measured The Federal Circuit also found that the by the thermometer became the focus of disclaimer made in the ‘880 patent extend- the appeal. The district court had con- ed to the ‘678 and ‘679 patents, which are strued the phrases “to outline the energy continuations-in-part of the ‘880 patent. zone,” “outline visibly” the energy zone, With respect to claim 16 of the ‘880 “to outline visibly the periphery,” and patent, which requires a “means for caus- equivalent phrases as excluding a laser ing” the laser beam to identify the periph- beam directed inside the energy zone. ery and center of the energy zone, the dis- The Federal Circuit concluded that the trict court had required that the laser beam district court’s claim constructions wrongly strike those points sequentially. The incorporated the negative limitation that Federal Circuit disagreed, finding that nei- the claims may not cover a device directing ther the claims nor the written description a laser beam inside the energy zone. The supported adding the limitation “sequen- Court began its analysis with claim 1 of the tially.” The district court justified its addi- ‘880 patent, which requires a “means for tion of the sequential limitation by first causing” at least one laser beam “to strike identifying corresponding structure in the the periphery of the energy zone for visibly disclosure of the ‘880 patent. The Federal outlining said energy zone.” The Federal Circuit concluded, however, that starting Circuit disagreed with the trial court’s find- with a structure and defining the function ing that directing light inside the energy in light of that structure, the lower court zone would contradict the stated purpose had essentially turned the rule of construc- of “visibly outlining said entire energy tion for means-plus-function claims upside zone” and concluded that the trial court down. 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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