NOVEM BER 1999 Last The Federal Circuit month at M ont h at a Glance CLAIM S COVER PRIOR ART TECHNIQUE DESPITE COM M ENTS IN SPECIFICATION Statements in patent noting certain inefficiencies in methodology of particular prior art system do not clearly disavow that methodology in general from scope of invention. Micro Chem., Inc. v. Great Plains Chem. Co., No. 98-1393 (Fed. Cir. Oct. 6, 1999) . . . . . . . . . . . . . . . . . . .1 COURT “OPENS DOOR” TO INFRINGEM ENT ON GARAGE DOOR OPENER PATENT Reissued, means-plus-function limitation found less limiting than original limitation. Overhead Door Corp. v. Chamberlain Group, Inc. , No. 98-1428 (Fed. Cir. Oct. 13, 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2 BROAD SETTLEM ENT AGREEM ENT “BLANKETS” LATER INFRINGEM ENT SUIT Where general language of settlement agreement indicates intent to settle all rights known at the time of the agreement, parties must expressly identify any rights they may wish to reserve. Augustine Med., Inc. v. Progressive Dynamics, Inc. , No. 98-1364 (Fed. Cir. Oct. 25, 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3 Washington, DC 202-408-4000 PERSONAL J URISDICTION IN OHIO “ Substantial revenue” requirement of Ohio long-arm statute requires an evidentiary hearing, at minimun. Schwanger v. Munchkin, Inc., Palo Alto 650-849-6600 No. 99-1049 (Fed. Cir. Oct. 7, 1999)(nonprecedential decision) . . . . . . . .4 CHANGES IN REEXAM INED CLAIM S LIM IT ENFORCEM ENT PERIOD Atlanta Amendments made during reexamination limit enforcement period to 404-653-6400 after date of reexamination certificate. Abbey v. Robert Bosch GmbH , No. 99-1169 (Fed. Cir. Oct. 6, 1999)(nonprecedential decision) . . . . . . . .5 Tokyo 011-813-3431-6943 DISPUTE WITH PTO LACKS J URISDICTION IN DISTRICT COURT Applicant seeks two billion dollars after a U.S. Patent and Trademark Office terminates application as incomplete. No jurisdiction in district Brussels court where Applicant had failed to exhaust administrative remedies. 011-322-646-0353 Mackay v. Commissioner of Patents & Trademarks , No. 99-1305 (Fed. Cir. Oct. 18, 1999)(nonprecedential decision) . . . . . . . . . . . . . . . . .5 DISTRICT COURT “SEES” EVIDENCE PROPERLY ON EYEGLASS LENS PATENT EDITED BY VINCE KOVALICK No error in findings of no infringement, no invalidity, and no laches or estoppel. E ssilor Int’l v. Nidek Co., No. 98-1558 (Fed. Cir. Oct. 29, 1999) (nonprecedential decision) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6 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 Claims Cover Prior Art Technique feed-additive control machines. Lextron origi- nally sold cumulative-weigh machines to con- Despite Comments in trol feed additives. Specification Micro Chemical, Inc. (“ Micro” ), owns the ‘971 patent. In response to Micro’s suit for Lawrence F . Galvin infringement, Lextron stopped making cumu- lative-weigh machines, choosing instead to [J udges: Rader (author), Plager, and make weigh-dump machines based on a prior Bryson] art process and device predating the ‘971 patent. In Micro Chemical, Inc. v. Great Plains The district court had narrowly interpreted Chemical Co. , No. 98-1393 (Fed. Cir. Oct. 6, the claims based on the preferred weigh 1999), the Federal Circuit reversed a district machine described in the ‘971 patent specifi- court’s finding of noninfringement regarding cation and found neither identity of function four of five asserted claims of U.S. Patent No. nor equivalent structure in the Lextron weigh- 4,733,971 (“ the ‘971 patent” ), and affirmed dump machines. In reaching this conclusion, both the district court’s finding of noninfringe- the district court had read a criticism of a par- ment regarding the other claim and its grant ticular prior art weigh-dump method of summary judgment releasing the described in the background section of the page 01 Defendant’s president from personal liability ‘971 patent as disavowing any coverage of the for inducing infringement. weigh-dump method. The ‘971 patent concerns machines that On appeal, the Federal Circuit found that control feed additives for livestock. The addi- the district court’s claim construction had tives include microingredients, such as vita- improperly incorporated both functional limi- mins and medicine. Such machines use a tations not recited in the claims and structure number of mathematical approaches to cor- beyond that necessary to perform the claimed rectly measure and dispense the proper function. In particular, the district court had amount of microingredients from their individ- improperly limited the function of the “ weigh- ual storage bins into a liquid-filled mixing ves- ing means” to cumulative weighing, then sel. These approaches include the “ cumula- identified the corresponding structure to tive-weigh” method, the “ loss-of-weight” include the specific cumulative-weigh structure method, and the “ weigh-dump” method. The of the preferred embodiment. The Court cumulative-weigh method uses a compart- ruled that the district court had also improper- mented hopper located between the storage ly read these limitations into the asserted bins and the mixing vessel to sequentially method claims as well. The Federal Circuit weigh multiple microingredients prior to dis- ruled that statements in the ‘971 patent not- pensing them en masse. The loss-of-weight ing certain inefficiencies in a particular prior method eliminates the hopper by individually art system that used a weigh dump method measuring the weight loss from each storage did not clearly disavow the weigh-dump bin as its respective microingredient is added method in general. directly into the mixing vessel. The weigh- Finally, the Federal Circuit agreed that dump method sequentially weighs each Lextron’s president should not be personally microingredient into a hopper and immediate- liable for inducing infringement. When he ly dumps that microingredient into the mixing had first learned of the ‘971 patent, he took vessel. reasonable steps to avoid infringement, includ- Lextron, Inc. (“ Lextron” ), formerly the ing consulting counsel in redesigning the Great Plains Chemical Co., manufactures ani- accused machines. mal health products and systems, including 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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