Sun Pharmaceutical Industries, Ltd. v. Eli Lilly and Company

In this case, the Federal Circuit held that the "the relevant specification for claim construction purposes is that of the issued patent, not an early version of the specification that may have been substantially altered throughout prosecution."

The district court found Eli Lilly's '826 patent invalid for obviousness-type double patenting over its '614 patent.  Both patents related to the drug gemcitabine.  The '614 patent claimed gemcitabine as well as a method of using gemcitabine for treating viral infections.  The '826 patent claimed a method of using gemcitabine for treating cancer.

The specification of the original application that resulted in the '614 patent described only gemcitabine's utility for antiviral purposes.  During prosecution, a continuation-in-part was filed that resulted in the '614 patent and added a description of gemcitabine's anticancer utility to the specification, though the '614 patent did not claim a method of using gemcitabine for treating cancer.  This continuation-in-part was filed the same day as the application that ultimately issued as the '826 patent.

While a "claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use", Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 1363 (Fed. Cir. 2008), Eli Lilly argued that the district court used the wrong specification in construing the '614 patent claim relating to the gemcitabine compound.  Eli Lilly asserted that the court should have used the earlier-filed application (i.e. the one that only described gemcitabine's utility for antiviral purposes, not for cancer purposes) instead of the specification of the ultimately issued patent, as Phillips stated that claim terms should be given their ordinary and customary meaning "the term would have to a person of ordinary skill in the art in question at the time of invention, i.e., as of the effective date of the patent application." 

The Federal Circuit disagreed, stating that "our claim construction precedent establishes that claim terms must be construed in light of the entire issued patent … the relevant specification for claim construction purposes is that of the issued patent, not an early version of the specification that may have been substantially altered throughout prosecution."  The court therefore affirmed the finding of obviousness-type double patenting.

Approximately 30% of these 290 cases have been filed by only three plaintiffs:  Thomas Simonian (39), Promote Innovation, LLC (23), and Patent Group, LLC (23).  Over half of the 290 cases have been filed in three district courts:  Eastern District of Texas (68), Northern District of Illinois (63), and Northern District of Texas (18).

On August 3rd, the Federal Circuit will hear the Stauffer v. Brooks Brothers appeal, which raises issues of what type of injury plaintiffs must allege to have Article III standing.  Legislation has been proposed in both the Senate and House of Representative that would limit the class of false marking plaintiffs to those who have suffered a "competitive injury" due to the alleged false marking.  This proposed legislation would be retroactive and would apply to all cases pending on or after the date the legislation is enacted.

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated daily with new false marking cases as well as status updates on pending cases.  A downloadable PDF chart is available on this page as well including information on the specific patents and products at issue in each litigation.  Other writings on false marking can be found here.

Haemonetics Corp. v. Baxter Healthcare Corp.

In this case, the Federal Circuit held that the district court erroneously gave the claim term "centrifugal unit" two different constructions for different instances of the term in a single claim and remanded the proceedings back to the district court.

The patent at issue related to a compact blood centrifuge device for separating and collecting components in a liquid such as blood.  In the asserted claim, the claim preamble stated "A centrifugal unit comprising a centrifugal component and a plurality of tubes" and the term "the centrifugal unit" also appeared twice in the body of the claim.  The district court construed the term "centrifugal unit", as found in the preamble, as comprising both the vessel and the tubing but also construed the same term, as found in the claim body, as comprising only the vessel.  The district court had reasoned that given certain dimensional limitations in the claim body, giving the term, as found in the claim body, a construction that includes the tubing "would yield an absurdity."

The Federal Circuit disagreed, stating that claim construction occurs "with an eye toward giving effect to all [] terms … even if it renders the claims inoperable or invalid."  In this particular case, the Federal Circuit found that the preamble language of the claim did not merely state the intended use but instead was controlling and defined "centrifugal unit" as comprising "two structural components: a centrifugal component and a plurality of tubes."  While the court acknowledged that an error may have occurred in drafting this claim, "it is what the patentee claimed and what the public is entitled to rely on."  The court went on to state that "we do not redraft claims to contradict their plain language in order to avoid a nonsensical result."  The Federal Circuit therefore concluded that the term "consistently means a vessel and a plurality of tubes."

Simonian v. Cisco Systems, Inc.

In this case, Judge Der-Yeghiayan in the Northern District of Illinois granted a motion to dismiss a false marking complaint for failure to adequately plead intent to deceive.  The Court first considered whether false marking claims are subject to Rule 8(a) or the heightened Rule 9(b) pleading requirements and concluded that "the Rule 9(b) pleading standard applies" to false marking claims.

Next the court considered whether the plaintiff had adequately pled the intent to deceive element of a false marking claim under Rule 9(b).  The plaintiff had alleged that "upon information and belief" the defendant is "a sophisticated company and has many decades of experiences applying for, obtaining, and/or litigating patents."  The court found that plaintiff had not alleged any specific facts upon which he bases this particular allegation and "all of [plaintiff's] other allegations related to [defendant's] knowledge and 'intent to deceive' not only flow from there, but are also based upon information and belief."  The court concluded that plaintiff "has failed to plead specific facts showing [defendant's] knowledge of the mismarking or its intent to deceive … [plaintiff's] complaint does not meet the heightened pleading requirements of Rule 9(b), and therefore we grant [defendant's] motion to dismiss the complaint."

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated daily with new false marking cases as well as status updates on pending cases.  A downloadable PDF chart is available on this page as well including information on the specific patents and products at issue in each litigation.  Other writings on false marking can be found here.

Pequignot v. Solo Cup Co.

In this false marking case, the Federal Circuit found that Solo Cup lacked intent to deceive the public and therefore affirmed the trial court's ruling of no false marking.

Solo Cup was accused of falsely marking over 21 billion cup lids with the numbers of two expired patents.  Under the false marking statute, the maximum penalty in this case could amount to over $10 trillion.  Solo Cup argued its cup lids were not "unpatented articles" under the statute as the now expired patents at one point did cover the lids and it had no intent to deceive the public.

Regarding whether an article covered by a now-expired patent is an "unpatented article" under the false marking statute, the Federal Circuit stated that "an article covered by a now-expired patent is 'unpatented.'"

Regarding intent to deceive, the Federal Circuit stated that "the combination of a false statement and knowledge that the statement was false creates a rebuttable presumption of intent to deceive the public, rather than irrebuttably proving such intent."  The Court described that the bar for proving deceptive intent "is particularly high, given that the false marking statute is a criminal one, despite being punishable only with a civil fine … [b]ecause the statute requires that the false marker act 'for the purpose of deceiving the public,' a purpose of deceit, rather than simply knowledge that a statement is false, is required."

Regarding the use of "may be covered" language in marking, the Court stated that "it is highly questionable whether such a statement could be made 'for the purpose of deceiving the public,' when the public would not reasonably be deceived into believing the products were definitely covered by a patent."

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated daily with new false marking cases as well as status updates on pending cases.  A downloadable PDF chart is available on this page as well including information on the specific patents and products at issue in each litigation.  Other writings on false marking can be found here.

Honeywell Int'l, Inc. v. United States

In this case, the Federal Circuit affirmed the claim construction from the Court of Federal Claims but also found that the Court of Federal Claims deviated from its claim construction in its obviousness analysis.

The patent at issue related to passive night vision goggles that are compatible with a full color display when both are used in an aircraft cockpit.  During claim construction, the Court of Federal Claims construed the term "local color display" as requiring the emission of perceptible red light.  The Federal Circuit agreed, stating "The claimed invention addressed the need for red warning lights in NVG-compatible cockpits, and it is inconceivable that an aircraft would use warning lights that are not perceptible to the crew. In other words, there would be no point, in the context of this invention, to pass a narrowband of red light that cannot be seen."

The Federal Circuit also found that the Court of Federal Claims "deviated" from this claim construction in its obviousness analysis when the court stated that is claim construction did not require the perception of red and instead required only that at lease one color be perceptible.

The government also contended that the patent claim was indefinite, arguing that the construction of "local color display" included the word "perceptible" which is "a subjective standard amenable to two different interpretations - color and brightness."  The Federal Circuit disagreed, stating that "We do not perceive any difficulty or confusion in determining what is a local color display and what is not a local color display in terms of the '914 patent. That is, local color displays are displays that emit visible, color light."   

In re Vaidyanathan

The Federal Circuit vacated the BPAI's rejection of two claims as the BPAI's interpretation of the claims "finds no support in the [application] specification, and is not a reasonable interpretation under the rules of claim construction."

The patent application at issue related to a guidance and control method for controlling munitions such as missiles or unmanned aircraft, wherein an autonomous reflex response is based on a neural network model of a biological response.  The claims at issue contained the limitation "wherein the neural network is guiding the munition, vehicle or aircraft to strike a target."  The BPAI found that the "to strike a target" limitation does not require that the neural network guide the missile or munition all the way to "intercept", but instead merely requires that the neural network guide the munition "to strike a target."  The BPAI viewed the term "as a recitation of intended purpose, rather than a step of a claimed method" and rejected the claims in light of a prior art reference whose purpose was a target strike but did not teach using the neural network to guide the missile all the way to intercept.

The applicant argued that the claims, when properly construed, required actual participation by the neural network until the point of intercept.

The Federal Circuit determined that the BPAI's interpretation of the claims was incorrect, as "[t]he description in the specification consistently indicates that the neural network guides the munition all the way intercept … [and] the [] specification uses the word 'strike' synonymously with 'intercept,' foreclosing the divergent meanings the Board seeks to attach to these terms."  The Federal Circuit therefore vacated the BPAI's rejection of these claims and remanded for reconsideration under the correct claim interpretation.

Randall May Int'l, Inc. v. DEG Music Prods., Inc.

In this case the Federal Circuit held that the district court's claim construction was in error where the construction read out an "adjustability" limitation for one element of the claims.

The patent at issue related to a shoulder-mounted harness for holding a percussion instrument, typically a drum, upon the torso of a musician in a marching band.  One limitation of the claims at issue was directed to the claimed harness "having changeable or adjustable shoulder supporting members."  The district court's claim construction of this term addressed the changeability of the shoulder supporting members but did not address the adjustability of the members.

The Federal Circuit, in an opinion by Chief Judge Michel, reiterated that claim construction is reviewed de novo however "in reviewing a district court's claim construction, this court takes into account the views of the trial judge … [t]hough we review those views and the record de novo, 'common sense dictates that the trial judge's view will carry weight.'" (internal citations omitted).  In this particular case, "the district court provided no explanation of the reasoning behind its claim construction."

The Court found that the claim language teaches that the shoulder supporting members are changeable or adjustable as "these terms immediately precede the term 'shoulder supporting members' and the only reasonable construction, therefore, is that these shoulder supporting members themselves, rather than the entire assembly, should be adjustable or changeable."  Further, all embodiments described in the specification taught that the shoulder straps are changeable, adjustable, or both.  The Court concluded that "[t]he district court's elision of the claim limitation (supported by the specification) that the shoulder supporting members are either changeable or adjustable is legal error because all the limitation in a claim must be considered meaningful."

Forest Group, Inc. v. Bon Tool Co.

Upon remand from the Federal Circuit's December 28, 2009 opinion finding that the appropriate penalty for false marking was up to $500 per falsely-marked article, the district court concluded that the appropriate penalty for plaintiff's false marking was $180 per article, where the trial record established that the article in question was sold at prices between $103 and $180.  The district court found that a fine of $180 dollars per article, while at "the highest point of the price range … will deprive Forest of more than it received for the falsely-marked stilts, fulfilling the deterrent goal of § 292's fine provision."  Based on this per-article fine and sales of 38 falsely-marked articles, the district court imposed a fine of $6,840 against plaintiff.

Thanks go out to the Docket Report blog for its initial reporting of this case.  Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated daily with new false marking cases as well as status updates on pending cases.  A downloadable PDF chart is available on this page as well including information on the specific patents and products at issue in each litigation.  Other writings on false marking can be found here.

In re Suitco Surface, Inc.

In this case, the Federal Circuit reversed the PTO's construction of a claim term during reexamination of a patent as unreasonably broad, stating "[t]he broadest-construction rubric coupled with the term 'comprising' does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention."

The patent at issue related to a floor finishing material for use on athletic courts, bowling lanes, and other floor surfaces made of wood, linoleum, terrazzo, or concrete.  As described by the Federal Circuit, "[t]he invention is essentially a thin plastic sheet placed over a floor surface connected by an adhesive layer."  During reexamination of the patent, the PTO and BPAI construed the claim term "material for finishing the top surface of the floor" as "requiring a material that is structurally suitable for placement on the top surface of a floor."  Using this construction, the PTO and BPAI found that the "material for finishing the top surface of the floor" could be any layer above the floor regardless of whether it was the top or final layer.  The BPAI affirmed the PTO's rejection of the claims at issue.

The Federal Circuit, in an opinion by Judge Rader, disagreed with the PTO and BPAI, stating that the "express language of the claims requires a 'material for finishing the top surface of the floor ... [a] material cannot be finishing any surface unless it is the final layer on that surface.  Otherwise, the material would not be 'finishing' the surface in any meaningful sense of the word." (emphasis in original).  The Court went on to explain that "[i]f the PTO's construction were accepted, a prior art reference with carpet on top of wood, on top of tile, on top of concrete, on top of a thin adhesive plastic sheet anticipates the claims in question because an adhesive plastic sheet falls at some point in the chain of layers.  This construction does not reasonably reflect the plain language and disclosure of the '514 patent."

While noting that the PTO is required to give claims their "broadest reasonable construction", the Court also pointed out that "claims should always be read in light of the specification and teachings of the underlying patent" and the broadest reasonable construction rule does not give the PTO "an unfettered license to intepret claims to embrace anything remotely related to the claimed invention."

The Court concluded its analysis by determining that the broadest reasonable construction of "material for finishing the top surface of the floor" is "a clear, uniform layer on the top surface of a floor that is the final treatment or coating of a surface.  It is not any intermediate temporary, or transitional layer." (empahsis in original).  The Court therefore vacated and remanded for findings consistent with that claim construction.