I encourage every-one to consider attend-ing the CLE programof the IP Section'sannual meeting onApril 9, 2010, at theGrandover Resort inGreensboro. Thisyear's program offers awide variety of subject matter includinglicensing for pharmaceuticals, biotech,and open source/free software, patentexhaustion, and 112 issues. We will alsofeature a punt/counterpoint discussion onpatentable subject matter in view of Bilskiv. Kappos and as well as a presentation ondevelopments in Trademark protection,and more. We are excited about providingthis year's CLE to the membership andhope that everyone can attend. See you onApril 9th!

IPLINKSPublished by the NCBA’s Intellectual Property Section Section Vol. 21, No. 2 March 2010 www.ncbar.org

Inside This Issue:

3 Patenting Nanotechnology: Is There Really Plenty of Room at the Bottom?

11 Patent Case Summaries

The Chair’sCommentsA Word from

Robert N. Crouse

Bob Crouse

Court of AppealsClarifies False MarkingDamagesby Tiffany Norris

On Dec. 28, 2009, the Court ofAppeals handed down a much anticipateddecision on the contested issue of damagesin a patent false marking suit. Accordingto the court’s interpretation of 35 U.S.C. §292 in Forest Group v. Bon ToolCompany, No. 2009-1044 (Fed. Cir. Dec.28, 2009), the false marking statuterequires a penalty for false marking on aper article basis of up to $500 per article,rather than imposing a single $500 fine foreach decision to falsely mark.

In this case, Forest Group, the assigneeof a patent claiming an improved spring-loaded parallelogram stilt, brought aninfringement action against a competitor,Bon Tool, who had begun importing aduplicate stilt version from a Chinesemanufacturer. Bon Tool counterclaimedalleging false marking and seeking adeclaratory judgment of patent invalidity.After claim construction, summary judg-ment of noninfringement was granted infavor of Bon Tool. Interestingly, claimconstruction was such that Forest Group’spatent no longer covered their own prod-uct. This claim construction ruling coin-cided with a copending litigation betweenForest Group and Warner Manufacturing,where the District of Minnesota hadreached a nearly identical claim construc-tion and also granted summary judgmentof noninfringement in favor of Warner onNov. 15, 2007. This November ruling wascentral to Bon Tool’s false marking coun-terclaim as Bon Tool argued that Forest

Group knew that their own product wasnot covered by the patent pursuant to theNov. 15, 2007 order and that any sale of aproduct marked with the patent numberoccurring after that date gave rise to falsemarking claims.

The United States District Court forthe Southern District of Texas agreed withBon Tool’s false marking counterclaim andfound that Forest Group had falselymarked its stilts after the November order.However, the District Court determinedthat the statute provided for a penaltybased only on each decision to mark anarticle rather than on a per article basis.Accordingly, Forest Group was only liablefor a penalty of up to $500 for the entirefalse marking offense, regardless of thenumber of articles that were falselymarked. Bon Tool appealed to the Courtof Appeals for the Federal Circuit, seekingclarification on the issue of damages andarguing that each marked article constitut-ed an “offense” under § 292. According tothe statute,

Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article, the word “patent” or any word or number importing that the same is patented, for the purpose of deceiving the public . . . Shall be fined not more than $ 500 for every such offense. 35 U.S.C. § 292(a) (2007).

See FALSE MARKING page 2

IP LINKS

VOL. 21, NO. 2 MARCH 2010

Published by the NCBA’sIntellectual Property Section

EditorDavid McKenzie

Editorial AddressP.O. Box 3688Cary, NC 27519

SECTION OFFICERSChairRobert N. Crouse

Immediate Past ChairMitchell Tuchman

Vice ChairCynthia B. Rothschild

SecretaryE. Eric Mills

TreasurerDavid W. Sar

Board LiaisonKim Bullock Gatling

SECTION COUNCILMichael J. AllenMyra T. Askins-SullivanMarjorie T. BenbowCharles W. CalkinsAnibal Jose CortinaAngela P. DoughtyDeborah R. GerhardtEileen King GillisDavid C. HallKate H. HatcherJoseph T. MeigsRobert A. MonathAndrew T. ProkopetzSimone RoseMark H. Webbink

©North Carolina Bar Association 2010No portion of this publication may be reprinted withoutpermission.

Views and opinions expressed in articles published hereinare the authors’ only and are not to be attributed to IPLinks, the Intellectual Property Section or the NCBA unlessexpressly stated. Authors are responsible for the accuracy ofall citations and quotations.

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False Marking from page 1

Upon review, the Court of Appeals heldthat the plain language of the statute didnot support the District Court’s penalty of$500 for one decision to mark multiplearticles. Rather, the Court of Appeals rea-soned that the statute’s plain languagerequires the penalty be imposed on a perarticle basis. In particular, the statute pro-hibits false marking of “any unpatentedarticle,” and it imposes a fine for “everysuch offense.” Thus, the court concludedthat the statute requires that each articlethat is falsely marked constitutes an inde-pendent offense under 35 U.S.C. § 292.

False marking has become an increas-ingly interesting topic because the falsemarking statute is a qui tam statute allow-ing a private citizen to sue on behalf of thegovernment and split any damagesreceived from the suit with the govern-ment. With damages of up to $500 perarticle, these suits could allow a private cit-izen to pocket millions if a company false-ly marked a large numbers of products. In

several instances, patent attorneys havefiled suit as private citizens against compa-nies accused of false marking. Accordingly,patentees have had to become aware offalse marking claims by competitors andprofit-seeking private citizens.

In order to avoid false marking claims,several practical considerations can be dis-cerned as a result of Forest Group andother recent false marking cases. For exam-ple, monitoring the expiration dates ofexisting patents, distinguishing betweenproducts that are patented versus patentpending, avoiding a “catch all” approachto patent marking, and revisiting anyproducts and articles that are marked withpatents that have been subject to claimconstruction are all important considera-tions that have been touched upon by var-ious courts.

Monitoring the expiration dates ofpatents can help to avoid false markingclaims, as marking a product with anexpired patent number can give rise to a

See FALSE MARKING page 3

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false marking claim. Pequinot v. SoloCup, 540 F. Supp. 2d 649 (E.D. Va. 2008)(Suit initiated by private citizen patentattorney alleging false marking withexpired patent numbers). In addition,marking products as patented when theyare, in fact, only patent pending or haveno existing application may also constitutefalse marking. Bibow v. Am. Saw & Mfg.Co., 490 F.Supp.2d 128, 2007 WL1667043, (D. Mass. June 11, 2007) (Pressrelease saying product was patented whenactually only patent pending could giverise to false marking claims). Sadler-Cisar,Inc. v. Commercial Sales Network, Inc.,786 F. Supp. 1287, 1296 (N.D. Ohio1991) (Defendant liable under false mark-ing statute for marking a product as patentpending when no application had been

filed). Marking a product with a “catchall” phrase followed by a list of patents canalso give rise to false marking claims. AstecAm., Inc. v. Power-One, Inc., 2008 U.S.Dist. Lexis 20265 (E.D. Tex. April 11,2008) (The phrase “[t]hese products areprotected by one or more of the followingUS Patents” followed by 17 patent num-bers could constitute false marking).Finally, patentees should revisit productsmarked with a patent number that hasbeen involved in litigation and claim con-struction such as in Forest Group.

While Forest Group should cause con-cern for patentees, it is important to notethat a false marking claim requires intentto deceive the public. Furthermore, thedamages statute provides for damages of“not more than $500 for every such

offense.” It follows that any false markingclaimant must first prove intent and thenask for meaningful damages if they are toprofit from this qui tam statute. As aresult, patentees must balance their obliga-tion to notify infringers of the patentee’spatented product, while carefully stayingwithin the bounds of § 292. Failure to doso could result in defending against a suitfor false marking and facing the potentialfor substantial false marking damages.

Tiffany Norris is a second-year student atthe North Carolina Central UniversitySchool of Law and an intern that the OliveLaw Group in Cary, NC. She thanksBentley Olive, Esq., and Justin Nifong, Esq.

Patenting NanotechnologyIs There Really Plenty of Room at the Bottom?

by Jack B. Hicks, Gregory Grissett & Bernard Brown III

IntroductionIn 1959, Richard Feynman presented his

famous talk “There’s Plenty of Room at theBottom” to the American Physical Society atCalifornia Institute of Technology and fore-told, if not initiated, the field of nanotech-nology. Now, 50 years later, nanotechnologyis a multi-disciplinary subject area thatencompasses physics, chemistry, engineer-ing, materials science, electronics, textiles,biotechnology, and pharmaceuticals. Indeed,nanotechnology has contributed to innova-tions that continue to impact our lives.Extending battery life (http://www.a123sys-tems.com/), making fabrics more stain repel-lant, soil resistant, and wash durable forapparel uses (http://www.nano-tex.com/), anddelivering biologics via plant virus nano-par-ticles to specific cells in the human body(http://www.nanowerk.com/news/newsid=8462.php), are just a few of the innovationsthat have developed recently.

To address the flurry of activity by variousinterests seeking patent protection for nan-otechnology inventions, the United StatesPatent and Trademark Office (USPTO) cre-ated a new class for “nanotechnology” inven-tions – Class 977 Nanotechnology. See

http://www.uspto.gov/web/patents/biochempharm/crossref.html. This new class defines “nan-otechnology” as areas “related to research andtechnology development at the atomic,molecular or macromolecular levels, in thelength of scale of approximately 1-100nanometer range in at least one dimension,and that provide a fundamental understand-ing of phenomena and materials at the nano-scale and to create and use structures,devices, and systems that have novel proper-ties and functions because of their size.”

To many commentators, nanotechnologyis seen as the first new discipline in nearly acentury where the foundational conceptsand “building blocks” are being patentedearly in the developing stages of the field.Mark A. Lemley, Patenting Nanotechnology,58 Stan. L. Rev. 601 (2005). Various devel-opers and universities are actively engaged ina “race to the Patent Office” to secure protec-tion for inventions thought to be basic tofurther development. Thus, Feynman’s “bot-tom” has become crowded with patents cov-ering fundamental developments and createda virtual patent “thicket” that could be a seri-ous hindrance to future nanotechnologyinnovation, commercialization, and market-

ing. Those seeking to commercialize nan-

otechnology while seeking patent protectionthrough the USPTO will have challenges inthe years to come. The USPTO has the dif-ficult position of dealing with a growingtechnology in face of shrinking budgets anda lack of qualified people to effectively exam-ine patent applications. In recognition thatnanotechnology is interdisciplinary, theUSPTO created the new cross-reference classto try to capture the disparate and arguablyhaphazard system of categorizing previouspatents in this technical area. Hence, the taskof even finding prior, relevant patents withwhich to compare new applications is lessthan straightforward. To make mattersworse, early nanotechnology patents containbroad claims that likely overlap in scopebecause they were examined in different artunits. The result is a morass of overlappingpatents of questionable validity that eitherposes a risk of commercialization, i.e., a riskfor business developing a technology thatinfringes a claim, or a hindrance to obtainingpatent protection for a new invention. As aresult, the outlook of capitalizing on such

See NANOTECHNOLOGY page 4

False Marking from page 2

4 MARCH 2010

Nanotechnology from page 3

nanotech patents may be uninviting. This article serves as a primer in patent

law for nanotechnology scientists and devel-opers. The goal is to provide a basic under-standing of the U.S. patent system, to high-light the requirements for obtaining apatent, and to describe some of the potentialpatenting issues relevant to nanotechnology.

Overview of theUnited States Patent SystemA. Policy RationalesThe patent system in the United States is

based on the premise that providing anexclusive right to an invention provides anincentive for artisans to engage in creativepursuits. As author Ben Ikenson stated, “Apatent protects a person’s idea so that hemight rightly profit from it, thereby encour-aging innovation as a means to prosperity.”

Patents are effectively agreementsbetween the inventor and the public; theinventor retains a property right over his orher work for some limited amount of time inexchange for timely public disclosure. Apatent provides a limited, temporarymonopoly for the inventor to prevent othersfrom making, using, or selling an invention.In return for this monopoly, the public gainsknowledge of how to make and use theinvention. At the end of the patent term, theinvention becomes public and anyone maypractice the invention. This quid pro quo sys-tem strives to prevent unnecessary duplica-tion of inventions and promotes the benefi-cial exchange of products, services, and tech-nological information within and acrossnational boundaries.

There are other forms of intellectualproperty, such as copyrights, trade secrets,trademarks, and sui generis mask works thatmay also be applicable to some nanotechdevelopments, but these are not the focus ofthis article.

Three general types of patents exist,including utility, plant, and design patents.Design patents protect the ornamentaldesign of an object of manufacture, whereasplant patents protect distinct and new vari-eties of plants. Utility patents are granted toinventors of any new and useful process,machine, article of manufacture, or compo-sitions of matters, or any new usefulimprovements thereof and are the primaryfocus of this article.

B. Sources of Patent LawFor an invention to be patentable, it must

comply with the requirements of the U.S.patent laws. The source of these laws is theUnited States Constitution, which authoriz-es Congress to award exclusive rights toauthors and inventors for their writings anddiscoveries. U.S. Constitution, Article I, § 8,cl. 8. The patent laws are codified in Title 35of the United States Code and the corre-sponding rules are organized in Title 37 ofthe Code of Federal Regulations. 35 U.S.C.§§ 101 et seq. and 37 C.F.R. §§ 1.1 et seq.Section 101 of the Patent Laws provides thestatutory framework for the patent system inthe United States. This body of law setsforth, among other things, the requirementsof patentability, the process for obtaining apatent, and the standards that courts applywhen a patent owner seeks to enforce theirpatent. Another important source of infor-mation on patents and the examinationprocess is the USPTO Manual of PatentExamining Procedure, known officially asthe “MPEP,” which interprets the patentlaws and rules and informs patent officeexaminers how to examine applications,issue patents, and conduct other administra-tive matters. U.S. Patent and TrademarkOffice Manual of Patent ExaminingProcedure, 8th ed., Revision 7 (2008)(“MPEP”).

To obtain a patent, an inventor must sub-mit a patent application to the United StatesPatent and Trademark Office. The process ofsubmitting and obtaining a patent is called“prosecution.” Patent applications are typi-cally drafted and prosecuted by patent attor-neys or patent agents. A patent agent is a per-son with at least a bachelor’s degree in a tech-nical field, such as science or engineering,who has passed a qualification examinationand become registered to practice before theUSPTO. Likewise, a patent attorney has atechnical undergraduate degree, and haspassed both the USPTO registration exami-nation and a state attorney licensing exam.Inventors themselves may also submit andprosecute patent applications, although thisis seldom recommended due to the complex-ity of the patent system.

C. Parts of a Patent ApplicationA patent application consists of several

independent parts, including a list of theinventors; an oath or declaration; a specifica-tion; claims; drawings; a brief abstract; aninformation disclosure statement, and a fee.See generally, MPEP § 600. Inventors listedon the application are only those individuals

who have materially contributed to the con-ception and reduction to practice of theinvention. In the U.S., the inventor must bea human person; corporations or entities likeuniversities cannot be inventors. Further,unlike author bylines of scientific publica-tions, which may contain individuals whoperipherally contributed to the study, theinventors of a patent must have significantlycontributed to both the conception andreduction to practice of the invention. Theinventors must all sign a declaration (or takean oath administered by a notary) that theyare the true inventors of the invention.

The specification, drawings, and figuresdescribe and illustrate the invention, demon-strate how it works, and show others how tomake and use the invention. These parts ofthe application, and the content of these sec-tions, form the bulk of the inventor’s bargainwith the U.S. government, i.e. the disclosurein detail of the invention exchange for thepatent monopoly.

The most important part of a patentapplication is the claims. The claims of apatent define what the patent holder has aright to exclude others from doing. Theclaims precisely define the scope of the prop-erty right conferred by the patent. Claims areanalogous to the “metes and bounds” orboundaries recited on a deed for a parcel ofreal property.

Importantly, there is a duty of candorand good faith expressly imputed to everyindividual involved in the filing and prosecu-tion of a U.S. patent application. MPEP §2001. This duty requires disclosure of allinformation known by that individual to bematerial to the patentability of the inventionand the duty continues throughout prosecu-tion. A patent will not be enforceable if fraudwas attempted or carried out or the duty ofdisclosure was violated through bad faith orintentional misconduct during prosecution.An information disclosure statement may befiled with the UPSTO that lists prior art ref-erences, i.e., publications or other patents,that are material to patentability of theinvention. Filing this statement dischargesthe inventors or patent attorney’s duty ofgood faith and candor to the USPTO. Theintentional withholding of material informa-tion from the Patent Office can constituteinequitable conduct, and render the result-ing patent unenforceable.

D. Filing Date, Priority and Types of Patent Applications

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Unlike many other patent systems in theworld, the U.S. is a first-to-invent system,rather than a first-to-file system. The U.S.system is based on the premise that theinventor who conceived and diligentlyreduced to practice an invention should bethe one to whom a patent is awarded. Incontrast, the patent systems of other coun-tries reward the inventor who was first to filea patent application.

To begin patent prosecution, the patentapplication is assembled and submitted tothe USPTO. The date the application isreceived at the patent office is the prioritydate. This is the date that is compared withpotential prior art references or other patentapplications to determine whether the appli-cant’s invention is indeed novel. Consistentwith the U.S. policy of respecting the date ofinvention, the USPTO will permit theinventor to file an affidavit indicating thatthe actual date of invention was earlier thanthe filing date should a conflict with a priorart reference arise.

An applicant can establish early priorityfor a forthcoming patent application by fil-ing a provisional application. See MPEP §201.04(b). A provisional application differsfrom a regular utility application in that ithas no oath or declaration and no claims; italso is not examined. A provisional applica-tion is effectively a place holder at theUSPTO from which an applicant can claimpriority when filling a regular utility patentwithin one year. After one year, a provisionalapplication will abandon.

There are several types of regular utilitypatent applications, including divisionals,continuations, and continuations in part(CIPs). MPEP § 200. If an examiner deter-mines that there is more than one inventionclaimed in an application, a restriction maybe required. A restriction forces the applicantto elect one of the claimed inventions forexamination. The other non-elected inven-tion(s) may be pursued in a divisional appli-cation. A divisional application is a separateand new application that claims priorityfrom the originally filed application or “par-ent” (which may claim priority from a provi-sional application) and must be co-pendingwith and reference the parent application.

A continuation application is similar to adivisional application except that it is notmade in response to a restriction require-ment. A continuation application basicallyallows continued examination of an applica-tion while the parent application issues orabandons. A continuation in part (CIP)application is similar to a continuation appli-

cation, except that new matter can be addedto the specification. The new matter and anyclaims that are dependent on that new mat-ter do not retain the priority benefit from theearlier filing date of the parent. Thus, theapplication effectively has two priority dates-that of the parent and that of the date whenthe CIP was filed. Any claims depending oninformation in the parent application areexamined with respect to that original prior-ity date. Claims in the CIP that incorporatenew matter will be examined with respect tothe newer CIP priority date.

E. Non-U.S. and International ApplicationsAn inventor may decide to seek patents in

other countries where the invention will bemanufactured or sold. Most developed coun-tries have patent systems. As mentioned ear-lier, all countries other than the U.S., basepriority on the date the application was filed,regardless of the date of invention. Eachcountry has specific patent rules, so foreignpatent counsel is typically required to assistwith prosecution of the so-called “national”applications prosecuted directly in a coun-try’s patent office.

A separate type of application is an “inter-national” application under the PatentCooperation Treaty (PCT) promulgated bythe World Intellectual PropertyOrganization (WIPO). See generally MPEP §1800. An international application allows anapplicant to file a single application in aninternational receiving office and then desig-nate countries where foreign patent applica-tions are desired. The advantage of a PCTapplication is convenience and delay inentering “national” prosecution.

F. Examination of a Patent ApplicationAfter the patent application is filed at the

USPTO, the application placed in line to be“examined” by USPTO examiners.Examiners are scientists or engineers pre-sumably technically trained in the discipli-nary area of the particular invention. Thereare roughly 18 examination units and over6000 patent examiners employed by theUSPTO. Despite the number of examinersemployed by the USPTO, there remains abacklog of patent applications at theUSPTO. In some art units the initial exami-nation may not occur for two or more years.

The patent examiners evaluate whetherthe claims of the patent application complywith the patent laws, i.e. that the claims arepatentable. As will be discussed below, themajor requirements for patentability

include: (1) utility; (2) subject matter eligi-bility, i.e., is the subject matter of the claimeligible for patenting; (3) novelty; (4) non-obviousness (i.e. the invention must not beobvious to a person having ordinary skill inthe art); and (5) the patent application mustadequately describe and enable such that onehaving ordinary skill in the art can make anduse the invention. See 35 U.S.C. §§101,102, 103, and 112; MPEP §§ 700 and2100.

As part of the substantive examinationprocess by the USPTO, the examiner firstperforms a prior art search on the claims ofthe application and then makes a determina-tion of the invention’s patentability.Typically, the examiner issues an “officeaction” that “rejects” the claims of the inven-tion based on prior art references uncoveredby the search. Alternatively, the examinermay “allow” one or more claims, finding thatthe claims comply with all requirements forpatentability.

If the claims are rejected, the patentapplicant can amend the claims.Alternatively, the prior art reference may bedistinguished by persuasively arguing thatthe reference does not preclude patentabilityof the applicant’s invention. The majority oftime and expense associated with obtaining apatent is often incurred through the iterativeprocess of amending the application’s claims,submitting these amendments to the exam-iner, having the examiner reject the claims,and then repeating the process.Amendments are permitted until the exam-iner issues a “final rejection,” which mayoccur in the second office action.

If the application fails to gain allowance,and the “final rejection” stage is reached, theapplicant has several choices under currentlaw and regulations. The applicant mayappeal the examiner’s rejection to the Boardof Patent Appeals and Interferences; theapplicant may file a continuation or CIPapplication, or the applicant may file arequest for continued examination (RCE),which, by paying a fee to the patent office,allows examination of the application tocontinue. Prosecution of an application endswhen the application is allowed or aban-doned.

In recent years, allowance rates havedropped from a 1996-2001 high of over70%, to a 2008 figure of 44.2%. Hence, theUSPTO has severely limited allowance inrecent years. Commentators point to reasonsthat include recent limiting court decisionsconcerning obviousness, negative press

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6 MARCH 2010

Nanotechnology from page 5

resulting from ill-advised issuance of certaintechnology patents, and a mis-directed viewthat quality prosecution results from highrejection rates. But see Recent Comments bynew USPTO Director David Kappos (“Onthe subject of quality, there has been specu-lation in the IP community that examinersare being encouraged to reject applicationsbecause a lower allowance rate equals higherquality. Let’s be clear: patent quality does notequal rejection.”).

G. Allowance, Issue, Term, and Maintenance FeesIf an Examiner “allows” a patent, the

applicant is required to pay the issue fee andthe patent is issued and published in thePatent Gazette. Patent applications filed onor after June 8, 1995, have patent terms of20 years from the filing date. Thus, theamount of time that an application spends inprosecution can have a substantial negativeimpact against its patent term. Applicationsfiled prior to June 8, 1995, have a term of 17years from the issue date or 20 years from thefiling date, whichever is longer. Patent main-tenance fees are due at 3.5 years, 7.5 years,and 11.5 years after granting to preventabandonment of the patent. MPEP § 2500.

During the patent term, the patentee cansue anyone in Federal District court for theunauthorized making, using, selling orimporting of the patented invention. Thus,as described above, a patent is an exclusion-ary right. After a patent expires, anyone maymake, use, or sell the formerly-patentedinvention without repercussions from theexpired patent.

Major Requirementsfor PatentabilityA patent application is examined to

ensure compliance with the patent laws. Themajor requirements for patentability are (1)utility and statutory subject matter; (2) nov-elty; (3) non-obviousness; (4) adequate writ-ten description and enablement; and (5)proper claim form. Even though the require-ments for patentability are the same for alltechnologies, each of these hurdles poses spe-cific issues for nanotechnology patent appli-cations.

A. UtilityIn order for a patent to be granted, the

invention must have specific utility. Section101 of the Patent Act specifically recites:

“Whoever invents or discovers any new anduseful process, machine, manufacture, orcomposition of matter, or any new and use-ful improvement thereof, may obtain apatent therefor, subject to the conditions andrequirements of this title.” 35 U.S.C. § 101.Thus, an invention must be useful – i.e., itmust fulfill some particular need or performa specific task. Typically, lack of utility is notan issue for patenting a nanotechnologyinvention and inventions that have question-able utility can often be patented by imagi-natively drafting the patent application.

B. Statutory Subject MatterAn invention also must be of a “type” or

“class” that will be considered for patenting.As quoted above, section 101 of Title 35 ofthe United States Code lists several types ofpatentable subject matter including process-es, machines, objects of manufacture, com-positions of matter, or improvements there-of. 35 U.S.C. § 101. In the seminal caseDiamond v. Chakrabarty, the United StatesSupreme Court extended patentable “statu-tory subject matter to ‘include anythingunder the sun that is made by man.’”Diamond v. Chakrabarty, 447 U.S. 303,309, 206 U.S.P.Q. 193 (1980). Resultingfrom this case, living organisms that are pro-duced by genetic engineering such as recom-binant bacteria can be patented. The types of“inventions” that cannot be patented includeideas, artistic achievements, scientific princi-ples, laws of nature, physical phenomenon,naturally occurring items, and atomicweapons.

The landscape of patentable subject mat-ter is changing. In a recent en banc opinion,the Federal Circuit held that a “machine ortransformation test” is an applicable stan-dard to determine whether claims to a partic-ular method are patent eligible. In re Bilski,545 F.3d 943 (Fed. Cir. 2008), cert granted.If the claims are tied to a particular machine,or brings about a particular transformationof a particular article, the claims likely com-ply with 35 U.S.C § 101. The U.S. SupremeCourt, however, has granted cert review ofthis decision, casting uncertainty on the con-tinued viability of the “machine or transfor-mation test.” Bilski v. Doll, 129 S.Ct. 2735(U.S. Jun 01, 2009). Nanotechnology as abroad discipline is not likely impacted byrecent developments in this area of the law.For example, nanomaterials are at least“objects of manufacture” or “compositions ofmatter” and many nanotechnology methods

are tied to a machine, or transform materialsfrom one form to another.

C. NoveltyOne of the key barriers to patentability of

an invention is novelty. If an invention isanticipated by prior art, then it is notpatentable. In addition, an invention mustnot have been publicly known, used, or soldin the U.S. for more than one year before theinventor files a patent application. See MPEP§ 2131. The requirement for novelty isembodied in 35 U.S.C. § 102. An abbreviat-ed version of the statute is provided:

A person shall be entitled to a patentunless –

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or(c) he has abandoned the invention, or(d) the invention was first patented . . . or was the subject of an inventor’s certificate . . . in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than 12 months before the filing of the application in the United States, or (e) he did not himself invent the subject matter sought to be patented.35 U.S.C. § 102.The excerpt of the statute lists five condi-

tions that must be satisfied in order to obtaina patent. First, section 102(a) states that theinvention must not have been known orused by others in the U.S. or patented or dis-closed in a printed publication anywhere inthe world before the applicant applies for aU.S. patent. The printed publications arereferred to as prior art references. These con-sist of any published written material, in anylanguage, anywhere in the world, includingjournals, white papers, graduate theses,patents, published patent applications, Webpages, and poster presentations given atmeetings. Even an un-opened book shelvedin an obscure but accessible public librarycan serve as a prior art reference if it disclos-es the invention. A prior art reference must

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disclose every element of a claimed inventionin order to anticipate it.

A prior art reference can also defeatpatentability without expressly disclosing allof the elements in a claim. The elements ofthe claimed invention may be in a disclosedcomposition or process. MPEP § 2112. Thistype of prior art reference is said to anticipatethe claimed invention under the doctrine of“inherent anticipation.” Inherent anticipa-tion, however, does not apply if the prior artaccidentally or unwittingly discloses theclaimed subject matter. Importantly, theanticipatory inherent feature, process, orresult must be consistent, necessary, andinevitable in the prior art and not merely“possible” or “probable.” The policy behindinherent anticipation is that an inherentanticipatory prior art feature, process, orresult was, in fact, within the public domain,even though neither the inventor nor thepublic recognized the inherent feature.

Second, section 102(b) recites that if theinvention was patented or described in aprinted publication anywhere in the world,or was publicly used or sold in the U.S. morethan one year prior to an applicant filing apatent, then patentability is forbidden.MPEP § 2133. The scope of 102(b) is broadin that it encompasses publications describ-ing the invention, public use of the inven-tion, sales of the invention, offers for sale,and exclusive licensing of the invention bythe inventor. Publications can include peer-reviewed journals, poster presentations, oraltalks where summary handouts are distrib-uted, and Internet Web pages. This sectionof the statute is typically referred to as a“statutory bar,” because it bars patentabilitywhen the inventor delays in filing a patentapplication. Note that 102(b) focuses on aninventor’s conduct rather than that of “oth-ers.” The policy encourages filing a patentapplication within one year after discoveringa potential invention rather than delaying.

Third, section 102(c) bars patentability ifan inventor abandons his or her invention.This may occur when an inventor disparageshis or her own work in a peer reviewed jour-nal or white paper. MPEP § 2134.

Fourth, section 102(d) prevents an inven-tor from filing a patent application in a for-eign country more than one year prior to fil-ing a U.S. application. MPEP § 2135.

Finally, section 102(f ) forbids patentabil-ity if the inventor did not invent the inven-tion. An “inventor” cannot patent an inven-tion that was copied from someone elsebecause the “inventor” did not in fact inventthe invention. MPEP § 2137.

D. Non ObviousnessPerhaps the most difficult barrier to

patentability is “non obviousness.” Section103(a) of the Patent Act recites in part:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 35 U.S.C. § 103(a).

This statute bars patentability if an inven-tion claimed in a patent application wouldhave been obvious to a person having ordi-nary skill in the art at the time the inventionwas made. The phrase “person having ordi-nary skill in the art” refers to a hypotheticalindividual who has ordinary skill in the dis-cipline of the invention. In some art areasthis may be mere general knowledge, where-as in other disciplines, it may be a Ph.D. orequivalent industry experience. Significantly,a person of ordinary skill has only ordinarytechnical skill in the art, but is imputed tohave extraordinary knowledge of all the liter-ature or prior art in a given field at the timeof the invention.

Unlike 35 U.S.C. § 102, where a singleprior art reference must disclose every ele-ment of a claimed invention in order to beanticipatory, section 103 permits the combi-nation of several references to create theclaimed invention if it would have beenobvious to a person of ordinary skill. MPEP§ 2141. The policy rationale is that if aninvention is so obvious that one having ordi-nary skill in the art would have thought of it,then it does not deserve to be patented.

The analytical framework for determin-ing whether a patent application’s claims areobvious was articulated by the SupremeCourt in Graham v. John Deere Co.Graham v. John Deere Co. of Kansas City,383 U.S. 1, 17 (1966). According to theSupreme Court, obviousness is a question oflaw based on underlying factual inquiries.The Graham factual inquiries include: (1)determining the scope and content of theprior art; (2) ascertaining the differencesbetween the claimed invention and the priorart; (3) resolving the level of ordinary skill inthe pertinent art; and (4) evaluating evidenceof secondary considerations. The Supreme

Court reaffirmed these factual inquiries in animportant 2007 decision. KSRInternational Co. v. Teleflex Inc., 550 U.S.398, 417, 82 U.S.P.Q.2d 1385 (2007). Inaddition to the factors recited above, the fol-lowing criteria must be examined in order toestablish a proper prima facie case of obvi-ousness: (1) the prior art reference (or refer-ences, when combined) must teach or sug-gest all the claim limitations; (2) the combi-nation of references must teach the pre-dictable use of prior art elements accordingto their established functions; and (3) theremust be a reasonable expectation of successin combining the teachings of the references.Id.

E. Requirements of the Specification – Written Description, Enablement and Best ModeIn addition to examining the claims for

patentability, the specification of a patentapplication must provide an adequate writ-ten description of the invention; it mustshow how to make and use the invention;and it must describe the best mode of theinvention. Title 35 U.S.C. § 112, ¶1 out-lines the broad requirements for disclosure,that

[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. 35 U.S.C. § 112, ¶1.

The purpose of the written descriptionrequirement is to ensure that a person havingordinary skill in the art could reasonablyconclude that the inventor had possession ofthe claimed invention as of the date thepatent application was filed. MPEP §2164.08. Furthermore, the specificationshould provide sufficient disclosure to enablea person having ordinary skill in the art tomake and use the claimed invention withoutundue experimentation. MPEP § 2164. Thespecification should describe what the inven-tor believes is the best mode of the inven-tion. The best mode safeguards againstinventors who attempt to obtain patent pro-tection without making a full disclosure asrequired by the statute. MPEP § 2164. The

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best mode requirement prevents inventorsfrom disclosing what they believe to be theirsecond-best embodiment, while retainingthe best for themselves. In re Nelson, 280F.2d 172 (CCPA 1960).

F. Claims Must Describe the Subject Matter & Distinctly Define the InventionThe most important section of a patent

application is the claims because the claimsare what define the invention that is protect-ed by the patent. “The specification shallconclude with one or more claims particular-ly pointing out and distinctly claiming thesubject matter which the applicant regards ashis invention.” 35 U.S.C. § 112, ¶2.According to the statute, the claims must ful-fill two requirements. First, the claims mustset forth the subject matter that applicantsregard as their invention. MPEP § 2171.Second, the claims must particularly pointout and distinctly define the “metes andbounds” of the subject matter that will beprotected by the patent grant. Id. In otherwords, the words of the claims define theinvention and consequently give rise to whatis legally protected by the patent.Importantly, the claims should be writtenbroadly enough to adequately protect theinvention, but narrow enough to avoidencompassing potential prior art references,or risk invalidity.

Patentability Issues for Nanotechnology InventionsA. Patent Office IssuesThe emerging field of nanotechnology

differs from many of the classical art areas inthe patent office because nanotechnologyencompasses many different disciplines.Nevertheless, the pace of nanotech patentinghas been dramatic over the past severaldecades. Thus, it is difficult to search forprior art references because they may belocated in various topical areas. Further,patent applications may be examined by dif-ferent art units and may be issued with over-lapping claims. The USPTO has respondedto these issues by creating a new nanotech-nology class, 977. This class contains 263subclasses and allows organization of mostnanotechnology subject matter in a logicalmanner. Blaise Mouttet, Nanotech and theU.S. Patent & Trademark Office: TheBirth of a Patent Class, 2 NanotechnologyLaw & Business 260 (2005); compare to

European Patent Office Tags Y01N2, N4,N6, N8, N10 and N1. The new USPTOclass is not designed around a topic or tech-nology because nanotech is multiple discipli-nary art and prior art is scattered throughoutthe patent classification system. Technologyclass 977 is a cross-referenced classification.Patents are first referenced in an area relatedto specific technology, then a secondary nan-otech classification is also assigned to providea supplemental search resource.

Several authors have examined the statis-tics of nanotech patents. A study publishedin 2006 collected statistical data on the num-ber of nanotechnology patent applicationsfiled per year in the USPTO and examinedwhich countries and what types of entitieswere filing the most nanotech patent appli-cations during the 2000-2004 period. BlaiseMouttet, Nanotechnology and U.S.Patents: A Statistical Analysis, 3Nanotechnology Law & Business 309(2006). This study concludes that the rela-tive application filing rates in nanostructuresand medical areas were declining over thisperiod while electronic applications,fullerenes, and nanotube filings were on therise. Further, U.S. entities filed the mostapplications in the USPTO, followed byJapan, Germany, South Korea, and France.The majority of the U.S. entities were corpo-rations, followed by government or militaryassignees, universities, and individuals,respectively.

Another recent study examined nan-otechnology patents granted over the past 30years by the USPTO, the European PatentOffice (EPO), and the Japan Patent Office(JPO) between 1976 and 2006. HsinchunChen, Mihail C. Roco, Xin Li and YilingLin, Trends in Nanotechnology Patents, 3Nature Nanotechnology 123 (2008). Thisstudy identified issued patents related tonanotechnology using specific keywordsrather than relying on patent classificationschemes. According to the results, theUSPTO granted 7,406 nanotechnologypatents between 1976 and 2006; the EPOand JPO granted 3,596 and 1,150 patents,respectively. The majority of the patentsgranted by the USPTO were filed by U.S.entities. Interestingly, U.S. entities also led inthe number of filings in the EPO. Sevenother countries, including Japan, Germany,France, South Korea, Switzerland, the UK,and the Netherlands were among the top 10countries in both the USPTO and EPO fil-

ings. IBM had the most U.S. patents issuedduring this period (209), followed by theUniversity of California (184), the U.S.Navy (99), Eastman Kodak (90), and theMassachusetts Institute of Technology (76).There was very little overlap in the top tenentities who were granted patents by eachpatent office, but IBM and Eastman Kodakwere featured in the top ten of both theUSPTO and EPO and the Japan Science andTechnology Agency and Matsushita ElectricIndustrial were both in the EPO and JPOtop ten lists.

The authors performed a cursory surveyof the number of U.S. patent applicationsthat were assigned to class 977 and the num-ber that were granted over the past 10 yearsusing the Delphion patent database(Thomson Reuters). The results are listed inTable 1. There was a striking increase in thenumber of nanotech applications filedbetween 2006 and 2007, with the numberroughly doubling. The number of applica-tions filed in 2008 declined slightly, and itappears that this value will be at leastmatched by the end of 2009. The number ofpatents granted in class 977 rapidly increasedfrom 2004 through 2006, almost doublingeach year. Since 2006, about 100 additionalnanotechnology patents have been grantedeach year. Thus far in 2009, about 300patents have been granted. Overall, thenumber of nanotech patent applications andissued patents appears to have leveled offfrom the rapid growth seen during the 2005-2007 period. (See table, Page 9)

Another issue impeding nanotechnologypatenting is the patent backlog. In 2008, theUSPTO took an average of 25.6 months toissue a first office action and the average totalpendency from filing to issuance or aban-donment is 32.2 months. United StatesPatent and Trademark Office Performanceand Accountability Report Fiscal Year 2008.This problem is compounded by the short-age of examiners. The USPTO hired 1,211new examiners in 2008 and planed to hireabout 1,200 examiners per year in FY 2009.However, fear of budget shortfalls forced theUSPTO to impose a hiring freeze and reduceexpenditures in June 2009. Amy Schatz,Backlog, Budget Woes Await Patent Chief,The Wall Street Journal, July 21, 2009 at B5.As of the end of 2008, the total number ofexaminers was around 6,300 and there was abacklog of about 740,000 applicationsawaiting examiner action. In the 2008 calen-

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dar year, there were over 1.2 million pendingpatent applications. United States Patent andTrademark Office Performance andAccountability Report Fiscal Year 2008.

Patent filings all over the world are downwhich may improve the backlog. Seeing theForrest: Considering Worldwide Patent Trends(http://www.patentlyo.com/patent/2009/08/seeing-the-forrest-considering-worldwide-patent-trends.html). However, the decrease inpatent filings at the USPTO for 2009 havebeen reported as high as 16 %.( h t t p : / / w w w . p a t e n t l y o . c o m /patent/2009/03/index). This droponly exacerbates the budget prob-lems described above. It is not clear,however, if nanotechnology patentfilings are down substantially com-pared to other art units.

In the nanotech area, anotherproblem has been finding qualifiedexaminers with sufficient knowl-edge and experience of the technol-ogy to examine applications.Moreover, high examiner work-loads often lead to attrition. TheU.S. Government AccountabilityOffice determined in 2007 that forthe years 2002-2006 approximatelyone patent examiner left theUSPTO for every two that werehired. U.S. GovernmentAccountability Office, Report tothe Ranking Member, Committeeon Oversight and GovernmentReform, House of Representatives,U.S. Patent And Trademark Office:Hiring Efforts Are Not Sufficient toReduce the Patent Application Backlog GAO-07-1102 (2007). Further, over 70 percent ofthe examiners left the USPTO with less than5 years of experience and those are typicallythe examiners who are responsible for exam-ining applications to reduce the backlog.Consequently, the current backlog increasesas examiners leave. Collectively, the mount-ing workload caused by the backlog of appli-cations and the shortage of examiners withappropriate experience means that applica-tions for patents in nanotechnology typicallyhave long prosecution times. And, the back-log continues growing as more applicationsare filed.

The following sections provide sugges-tions and strategies for inventors and patentpractitioners to effectively prosecute nan-otech patent applications.

B. Specification and ClaimsAn inherent difficulty with nanotech

inventions is that they are submicroscopic.Consequently, such inventions may be diffi-cult to describe in terms that are applicableto traditional mechanical inventions, materi-al, or compositions. However, it is importantto use general, well-known terms of art todescribe the invention. Any unclear terms inthe specification should be defined and clearstatements of the intended scope of suchterms should be provided. Of course theterm “nano-sized” or “nanoparticle” itselfwill need clear definition in the specification.Inventors should avoid acting as their own

lexicographer and define novel terms unlessit is necessary. Likewise, using poorly definedterms to introduce breadth into the specifi-cation and claims is not recommended. M.Henry Heines, “Nano-Aerobics” and thePatent System, 2 Nanotechnology Law &Business 355 (2005).

Another issue is that a nanotech inven-tion may have several potential uses. The keyto drafting an effective specification that willsupport a variety of patentable claims is totake a broad, forward-looking, interdiscipli-nary perspective. Patent drafters should envi-sion alternative uses and future applicationsfor which the invention may be relevant. Atthe same time, the drafter should balancethis goal with the objective of only disclosingenough information to enable the inven-tion(s) being claimed.

The specification should clearly addresshow to make and use all embodiments of theinvention and how the embodiments may

differ from each other. The specificationshould demonstrate how to make, use, andtest the invention so that it is enabling with-out undue experimentation. Further, ensurethat there is adequate written descriptionand enablement for all embodiments.Examples and representative data should beincluded to support the best mode of theinvention and the most important independ-ent claims. Leonard P. Diana, Lawrence S.Perry, John C. Heuton, and Rita S. Wu,Untangling the Nanothreads Between theEnablement and Written Description

Requirements, 4 NanotechnologyLaw & Business 41 (2007).

Enablement could be a substan-tial problem with several nanotech-nology patents. As commercializa-tion significantly lags development,often inventions exist on “paper”and not yet in the lab. Hence, theinvention may not be enabled.Furthermore, the lack of availabilityof certain nanoparticles, e.g., puresingle wall and double wall carbonnanotubes, leave inventors to onlyspeculate on how they will behave instructures. Just as the USPTO andcourts would reject a patent to a StarTrek® transporter (seewww.filmjunk.com/2009/02/26/tre-knobabble-55-top-10-star-trek-inven-tions-yet-to-be-invented/ (last visitedSept. 1, 2009)), no matter howarticulately described, a patentdirected to a nanostructure con-ceived but not yet capable of reduc-tion to practice will fail.

When drafting the claims, include manytypes, such as those describing the inventionitself, the method of making the invention,the methods of using, kits, etc. In material,chemical, or pharmaceutical inventions,make sure to claim intermediates and down-stream products, such as metabolites. Thisprovides a wide zone of protection aroundthe primary invention. However, ensure thatall types are adequately described andenabled in the specification. Avoid usingbroad, non-specific claims because these canlead to invalidity. Use narrow claims directedto specific embodiments that are provided asexamples in the application and that are sup-ported with data. See Laurie A. Axford,Patent Drafting Considerations forNanotechnology Inventions, 3Nanotechnology Law & Business 305(2006).

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C. Utility and Statutory Subject MatterA nanotech invention may not be

patentable solely because it is small. Just likeany other invention, a product of nanotech-nology must have a realized use to be patent-ed. When drafting an application a usefulpractice is to clearly show how the inventionand its various embodiments solve particularproblems. Without including unnecessarywords of limitation, try to make the patentapplication “tell a story” by discussing whatproblems that the nanotech invention couldsolve and showing how the invention willaccomplish these goals. Attempt to make theapplication engaging and appealing to anexaminer. Laurie A. Axford, Patent DraftingConsiderations for Nanotechnology Inventions,3 Nanotechnology Law & Business 305(2006).

In addition, it is important to emphasizethe human intervention and processing ofnaturally occurring materials. Such process-ing can transform a naturally occurringmaterial into an object of manufacture thatis patentable. Further note that abstractideas, natural phenomena, and laws ofnature are not eligible for patenting. Forexample, novel quantum circuits may bepatentable, but the quantum mechanicprocess underlying the circuit is not.

D. Novelty and Non-obviousness: Not Much Room at the Bottom.One of the most challenging areas for

nanotech inventors (or any inventor today)are the novelty and non-obviousness barriersto patentability. The glut of nanotechpatents, published patent applications, andscholarly publications has created obstaclesto patenting current nanotechnology inven-tions. Depending on the claims sought, andthe particular area of nanotechnology, theseprior art references may bar a new patentapplication from maturing to a patent. Asdescribed above, many fundamental “build-ing blocks” of nanotechnology were patentedsoon after discovery. Mark A. Lemley,Patenting Nanotechnology, 58 Stan. L. Rev.601 (2005). The patent thicket that hasemerged has created an overlapping patentlandscape that must be negotiated in orderto patent current nanotech inventions.

While novelty and non-obviousness aredifficult standards to meet, there remainopportunities to protect nanotechnologyinventions. The same recent court decisionsthat are creating high hurdles to patentabili-

ty, also will be used to strike down some ofthe overly broad early patents in this are.Courts also have held that discovery of a pre-viously unappreciated property of prior art,or of a scientific explanation for the priorart’s functioning by a latecomer, does notrender the old invention patentably new.Atlas Powder Co. v. Ireco Inc., 190 F.3d1342, 1347, 51 U.S.P.Q.2d 1943, 1947(Fed. Cir. 1999). As suggested, it is impor-tant to note that nanotech inventions are notnovel because they are small, unless theprocess used to make the invention is noveland non-obvious. Further, a nanotech inven-tion is not novel if the elements and featuresperform the same function as those in theprior art without giving an unobvious andunexpected result. See In re Rose, 220 F.2d459, 105 U.S.P.Q. 237 (B.P.A.I. 1984). Butwhere the nanotech invention yields unex-pected results not recognized before, thereare strong arguments that the invention isnovel, and non-obvious to a person of ordi-nary in skill in the art.

These principles of non-obviousness areinformative for the nanotechnology inven-tor. While the “thicket” of fundamentalpatents in nanotechnology has not preventedinnovation in nanotechnology, it remainsvery important to document and emphasizeunexpected results. To the extent possible,patent owners can distinguish their inven-tion by distinguishing prior art references asnon-anticipating or even non-enabling thenanotech invention. See Louis M. Troilo,Patentability and Enforcement Issues Related toNanotechnology Inventions, 2.1Nanotechnology Law & Business 36 (2005).

E. InfringementPatent infringement requires a person to

make, use and sell an invention in theUnited States. The activity must fall withinthe claims of the U.S. paten, whether literal-ly, or equivalently. While the claims definethe scope of the invention, the claims pro-vide notice to the public as to the nature andscope of the invention. In the United States,a judge, opposed to jury, decides what theclaims of a patent mean. A problem withsome nanotech inventions may pertain todetectability, because detection means maynot prove with certainty the existence ofinfringing activity. The inability to ascertainpotential infringers may undermine thevalue of such patents to the patent holder.Similarly, the ability to determine overlap

with previously existing patents may alsohinder developers seeking to “design around”issued patents. See generally Louis M. Troilo,Patentability and Enforcement Issues Related toNanotechnology Inventions, 2.1Nanotechnology Law & Business 36 (2005).Nevertheless, nanotechnology companiesseeking to exploit the promise of nanotech-nology are faced with the risk of patentinfringement for products that appear toencroach the patent thicket discussed above.

ConclusionIn many perspectives, patenting a nan-

otechnology invention is no different thanpatenting an invention from other fields.Commercial research and development hasalways been conducted in the context ofboundaries, e.g., needs, cost constraints, etc.Managing risk in research development is aconstraint scientists have addressed longbefore nanotechnology was a recognized dis-cipline.

Nevertheless, barriers to patentability doexist for developers of nanotechnology, andinventors and patent drafters will have toremain alert to issues of enablement andnon-obviousness, while the existing thicketof prior art patents are cut down or circum-navigated. At the same time, issues will becompounded by the backlog of applicationsand the shortage of examiners with trainingin nanotechnology. Perseverance, tenacityand dedication will be required to obtain therewards of innovation and to further incen-tivize inventors to obtain the just reward fortheir efforts.

Jack Hicks, J.D., M.S. (MechanicalEngineering), is a patent attorney at WombleCarlyle and an Adjunct Professor at Elon Law.

Gregory Grisset, J.D., M.S. (TextileTechnology) is also a patent attorney at WombleCarlyle.

Bernard Brown II, Ph.D. (Biochemistry), isa patent agent and third-year law student atElon Law. for their help and assistance withthis article.

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The summaries below summarize patent-related opinions of interest issued by the Courtof Appeals for the Federal Circuit from June2009 to September 2009. These summarieswere edited by Robin McGrath, a partner inAlston & Bird’s Atlanta office; and LanceLawson and Mike Connor, partners, and RossBarton, an associate, in Alston & Bird’sCharlotte office.

Patentable Invention: Obviousness: Secondary Considerations of non-obviousnessInfringement: Doctrine of Equivalents: Prosecution History Estoppel: GenerallyInfringement: Doctrine of Equivalents: Hypothetical Claim Analysis

Infringement: Doctrine of Equivalents: Willful Infringement Defenses: Miscellaneous Defenses

Remedies: Damages: Lost ProfitsRemedies: Damages: Reasonable

RoyaltyRemedies: Damages: Attorneys’

FeesRemedies: Damages: Exceptional

Case (Enhanced Damages)

DePuy Spine, Inc., et al. v. Medtronic Sofamor Danek, Inc., et al., Nos. 08-1240, -1253, -1401 (Fed. Cir. (D. Mass.) June 1, 2009). Opinion by Linn, joined by Newman and Bryson. The Federal Circuit (1) reversed the dis-

trict court and significantly reduced thedamages award based on lost profits byexcluding unpatented “pull-through” prod-ucts from the analysis, as they did not com-pete or function with the patented products;(2) affirmed the district court’s denial of theAppellant’s judgment as a matter of law(“JMOL”) on lost profits based on thepatented products; (3) affirmed the districtcourt’s denial of the Appellant’s ensnarement

defense, holding that the defense was a legallimitation to be decided by the court; (4)upheld the district court’s denial of DePuy’smotion for a new trial on reasonable royaltydamages; (5) upheld the district court’s grantof Appellant’s JMOL of no willfulness given,in part, that the Federal Circuit previouslyaffirmed a grant of summary judgment of noliteral infringement; and (6) reversed the dis-trict court’s erroneous imposition of sanc-tions and attorneys’ fees predicated on theassertion of the reverse doctrine of equiva-lents.

DePuy Spine, Inc. and BiedermannMotech GmbH (collectively “DePuy”) suedMedtronic Sofamor Danek, Inc. andMedtronic Sofamor Danek USA, Inc. (col-lectively “Medtronic”) alleging infringementof U.S. Patent No. 5,207,678. During a firstappeal, the Federal Circuit affirmed thegrant of summary judgment of no literalinfringement, but reversed the grant of sum-mary judgment of non-infringement underthe doctrine of equivalents and remanded.

On remand, Medtronic raised anensnarement defense against the doctrine ofequivalents, arguing that the asserted scopeof equivalency would encompass the priorart. The district court took the questionfrom the jury and held that ensnarement,like prosecution history estoppel, is a legallimitation. The jury found that Medtronicinfringed and awarded DePuy $149.1 mil-lion in lost profits on the patented screwsand $77.2 million in lost profits on theunpatented “pull-through” products. Thejury also determined that a 0% royalty rateon $237.2 million worth of infringing salesthat were not subject to DePuy’s claim forlost profits was appropriate. After the jurywas dismissed, the district court deniedMedtronic’s post-trial motions for a new trialon infringement and royalty damages, andfor JMOL on lost profits. Finally, the districtcourt granted DePuy’s motion for enhanceddamages due to Medtronic’s litigation mis-conduct and awarded DePuy 15% of itsattorneys’ fees and sua sponte imposed a fur-ther $10 million sanction under the court’sinherent authority.

On appeal, the Federal Circuit upheld thedistrict court’s denial of Medtronic’s ensnare-

ment defense. In addition to its substantivedefense, Medtronic argued that, procedural-ly, the ensnarement defense should havebeen submitted to the jury rather than thejudge. The Federal Circuit disagreed andheld that, like prosecution history estoppel,ensnarement is a legal question to be deter-mined by the court. Substantively, theFederal Circuit considered a hypotheticalclaim construct and determined that itwould not have been obvious in view of theprior art.

Turning to lost profits, the FederalCircuit reversed the portion of the lost prof-its award that was based on unpatented“pull-through” products, holding that “theRite-Hite ‘functional unit’ test set[s] forththe key criterion for lost profits of unpatent-ed materials,” namely, whether the productsare sold with or separately from the patenteditem. DePuy’s pull-through products fellshort of being a functional unit with thepatented products. Even DePuy’s damagesexpert admitted that the pull-through prod-ucts were related to the patented productsonly by virtue of the business relationshipthat is created when customers buy thepatented screws.

On cross-appeal, DePuy challenged thedistrict court’s denial of a motion for a newtrial on the issue of reasonable royalty dam-ages. The Federal Circuit held that the dis-trict court correctly ruled that the jury awardof a 0% royalty was inconsistent with itsother findings, and that DePuy failed totimely object to the inconsistency. TheFederal Circuit thus affirmed the districtcourt’s application of the First Circuit’s“iron-clad” rule barring untimely inconsis-tency objections.

DePuy also challenged on cross-appealthe grant of Medtronic’s JMOL of no willfulinfringement. On appeal, the FederalCircuit, in affirming the grant ofMedtronic’s JMOL on no willfulness,applied the willfulness standard from In reSeagate Technologies and ruled that therewas no legally sufficient evidentiary basis tofind an objectively high likelihood that theMedtronic products infringed because, mostnotably, the Federal Circuit had previously

Patent Case Summariesby Robin McGrath, Lance Lawson, Mike Connor & Ross Barton

See SUMMARIES page 12

affirmed the grant of summary judgment ofno literal infringement and remanded for adetermination of infringement by equiva-lents, indicating that the issue of infringe-ment was a close call.

Finally, the Federal Circuit reversed theaward of attorneys’ fees and the impositionof sanctions. The Federal Circuit held thatthe district court had no basis for findingmisconduct other than the mere fact thatMedtronic raised an unusual defense – thereverse doctrine of equivalents – that tangen-tially implicated issues already resolvedagainst Medtronic by the Federal Circuitduring the first appeal. The Federal Circuitheld that the issue of the application of thereverse doctrine of equivalents was notdecided in the earlier appeal and, further,that although it is not a common defense,absent a finding of “vexations or unjustifiedlitigation,” “frivolous suit,” or some othertype of “bad faith,” it was improper toimpose sanctions.

http://www.cafc.uscourts.gov/opinions/08-1240.pdf

Charles Basinger is an Associate in Alston &Bird’s Washington, D.C. office.

Defenses: InvalidityRemedies: Injunctions: Preliminary Injunction

Titan Tire Corp., et al. v. Case New Holland, Inc., et al., No. 08-1078 (Fed. Cir. (S.D. Iowa) June 3, 2009). Opinion by Plager, joined by Newman and Gajarsa.In a design patent case, the Federal

Circuit affirmed the district court’s denial ofthe patentee’s motion for a preliminaryinjunction because the district court did notabuse its discretion when it applied the “like-lihood of success” standard and consideredand weighed both parties’ arguments on theissue of obviousness. The Federal Circuitexplained and clarified at length the applica-ble standards and burdens associated with amotion for preliminary injunction in apatent case.

The Goodyear Tire & Rubber Company(“Goodyear”) owns U.S. Design Patent No.360,862 (“the ‘862 patent”), which claims adesign for a tractor tire. Titan Tire

Corporation (“Titan”) is a licensee with theright to enforce the ‘862 patent. In March2007, Goodyear and Titan (collectively“Titan”) sued Case New Holland, Inc.(“Case”), alleging that Case sells backhoesequipped with tires that infringe the ‘862patent. Titan later added two additionaldefendants.

In May 2007, Titan filed a motion forpreliminary injunction to stop the defen-dants from selling the allegedly infringingtires. The district court denied the motionbecause it found that Titan was not likely towithstand Case’s challenge to the patent’svalidity on obviousness grounds. The courtdid, however, find that Titan was likely tosucceed in showing infringement and thatthe other three preliminary injunction fac-tors all weighed in Titan’s favor. Despite that,the district court ruled that the validity issuealone was sufficient to defeat the motion forpreliminary injunction.

On appeal, the Federal Circuit first care-fully explained how the burdens at the pre-liminary injunction stage differ from theburdens at trial. Unlike during trial, at thepreliminary injunction stage, the patentee asthe movant must persuade the court that thepatentee is likely to succeed at trial on thevalidity issue despite the accused infringer’schallenge to validity. Next, the FederalCircuit noted that district courts have differ-ing meanings of a “substantial question” ofinvalidity. Federal Circuit precedent estab-lishes that the phrase refers to a conclusionreached by the trial court after consideringthe evidence on both sides of the validityissue, not just the challenges from theaccused infringer. That means that after theaccused infringer presents evidence on inva-lidity to raise a substantial question, the trialcourt must also consider the patentee’s evi-dence that the invalidity defense lacks sub-stantial merit. After considering that evi-dence, the trial court must determinewhether it is more likely than not that theaccused infringer will be able to prove attrial, by clear and convincing evidence, thatthe patent is invalid. Finally, the FederalCircuit reemphasized that the ultimate issueis whether the plaintiff established a likeli-hood of success on the merits. After deter-mining a likelihood of success on the merits,the trial court must determine, in light ofthat and the other three factors, whether apreliminary injunction should issue.

After applying a sound obviousness testunder existing Federal Circuit precedent setforth in Durling v. Spectrum Furniture Co.,101 F.3d 100 (Fed. Cir. 1996), the FederalCircuit held that the district court did notabuse its discretion in finding the ‘862patent obvious in light of the prior art.Additionally, the district court applied theproper preliminary injunction standard andproperly weighed both parties’ arguments onthe issue of obviousness.

http://www.cafc.uscourts.gov/opinions/08-1078.pdf

Charles Basinger is an Associate in Alston &Bird’s Washington, D.C. office.

Patentable Invention: Anticipation: GenerallyPatentable Invention: Obviousness: Teaching, Suggestion, or Motivation in Prior Art

Claim Interpretation: GenerallyClaim Interpretation: Intrinsic Evidence: Prosecution Disclaimer

Infringement: Contributory and Induced Infringement

Remedies: Injunctions: Permanent Injunction

Remedies: Damages: Other Damages

Litigation Practice and Procedure: Procedure: JMOL Procedure

Ecolab, Inc. v. FMC Corp., No. 08-1228, -1252 (Fed. Cir. (D. Minn.) June 9, 2009). Opinion by Gajarsa, joined by Rader and Dyk.The Federal Circuit affirmed the trial

court’s denial of post trial motions on claimconstruction and no inducement, butreversed the denial of motions relating tocertain invalidity findings. The court thenremanded the case for a determination oninjunctive relief and prejudgment interest.

Ecolab, Inc. (“Ecolab”) and FMCCorporation (“FMC”) each own patentsrelating to chemical products used by beefand poultry processors. At issue were

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Summaries from page 11

IP LINKS 13

Ecolab’s U.S. Patent Nos. 6,010,729 (“the‘729 patent”) and 6,113,963 (“the ‘963patent”) and FMC’s U.S. Patent No.5,632,676 (“the ‘676 patent”), which relateto Ecolab’s Inspexx brand products andFMC’s FMC-323 brand product. Ecolabsued FMC, alleging that FMC-323 infringedthe ‘729 and ‘963 patents. FMC counter-claimed that Ecolab infringed the ‘676patent. Both parties argued that its oppo-nent’s asserted claims were invalid. The juryfound that certain claims of Ecolab’s assertedpatents were invalid as anticipated or obvi-ous; FMC’s ‘676 patent was not invalid; eachparty infringed certain claims of the oppo-nent’s asserted patents; and neither partyinduced infringement. The jury awarded rea-sonable royalties to both parties. All post-trial motions filed by the parties were denied.Ecolab then appealed the denial of itsmotions for Judgment as a Matter of Law(“JMOL”), contending that it did notinfringe the ‘676 patent and that FMCinduced infringement of Ecolab’s patents.FMC also appealed the denial of its JMOLmotions, contending that Ecolab’s assertedclaims were invalid, that Ecolab inducedinfringement, and that FMC did notinfringe Ecolab’s patent claims.

On appeal, the Federal Circuit held thatasserted Claim 7 of the ‘729 patent wasinvalid as anticipated because the jury’s ver-dict was not supported by substantial evi-dence. Specifically, the court held thatFMC’s expert testimony demonstrated thateach claim element was disclosed in the priorart and that Ecolab’s arguments regardingprosecution disclaimer were unpersuasivebecause the arguments made during prosecu-tion did not limit the “consisting essentiallyof” language in the claims to mean that per-acetic acid was the sole antimicrobial agentthat could be included in the composition.Additionally, citing KSR Int’l Co. v. TeleflexInc., 127 S. Ct. 1727, 1739, 1741 (2007),the court held that, since the advantages ofspraying antimicrobial solutions onto meatat high pressure were known and methodsfor sanitizing meat with PAA were known,Claims 25-28 of the ‘963 patent were invalidas obvious because “there was an apparentreason to combine the known elements inthe fashion claimed by the patent at issue,”and the patent was “merely the combinationof familiar elements [that] yield predictableresults.” The court ultimately upheld the dis-trict court’s finding that FMC’s patent wasnot invalid. However, the court affirmed the

district court’s denial of FMC’s motion thatEcolab induced infringement, holding that“the jury could have reasonably concludedthat Ecolab lacked the required intent” sinceEcolab presented evidence that it reasonablybelieved it did not infringe.

The Federal Circuit further held that thedistrict court’s denial of FMC’s motion forpermanent injunction without explanationwas an abuse of discretion and remanded theissue to be determined based on the factorsexpressed in eBay Inc. v. MercExchange,LLC, 547 U.S. 388, 391 (2006). Similarly,the court held that the district court’s denialof FMC’s motion for prejudgment interestwithout explanation was also an abuse of dis-cretion, and the Federal Circuit instructedthe district court to award interest or providea valid justification for withholding it.

http://www.cafc.uscourts.gov/opinions/08-1228.pdf

Brie Buchanan is an Associate in Alston &Bird’s Atlanta office.

Claim Interpretation: Ordinary Meaning

Claim Interpretation: Intrinsic Evidence: Specification

Claim Interpretation: Means-Plus-Function

Infringement: Generally

Gemtron Corporation v. Saint-Gobain Corporation, No. 2009-1001 (Fed. Cir. (W.D. Mich.) Jul. 20, 2009). Opinion by Linn, joined by Michel and Schall.In affirming the district court’s grant of a

permanent injunction against Saint-GobainCorporation for infringement of GemtronCorporation’s patent, the Federal Circuitheld that the district court correctly con-strued the claim, such that the product inquestion had to meet every element of theclaim only at the time of manufacture basedon the disclosure in the patent specification,to be an infringing product. The FederalCircuit also held that Saint-Gobaininfringed even though the product in ques-tion was manufactured outside the UnitedStates because the infringed claims recited anapparatus, and the presence of functionallanguage did not de-facto make the claim aproduct-by-process claim.

Gemtron Corporation (“Gemtron”) is theassignee of U.S. Patent No. 6,422,673 (the

‘673 patent) directed to a refrigerator shelfhaving a frame with “relatively resilient” fin-gers that allow the glass panel of the shelf tobe “snap-secured” into place, rather thanadhered with an adhesive, as in the prior art.Saint-Gobain Corporation (“Saint-Gobain”)sued Gemtron in district court seeking adeclaratory judgment of noninfringementand invalidity of the ‘673 patent and a relat-ed patent. Gemtron counterclaimed forinfringement. The district court construedthe claim phrase “relatively resilient end edgeportion which temporarily deflects and sub-sequently rebounds to snap-secure” to meanthat “the end edge portion is sufficientlyresilient that it can temporarily deflect andsubsequently rebound when glass is beinginserted into the frame.” Based on this claimconstruction, the district court granted par-tial summary judgment of infringement.Saint-Gobain appealed, arguing that theclaim required the “end edge portion” to berelatively resilient “always” or “at all temper-atures,” or “when in use in a refrigerator.”

In holding that the district court correct-ly construed the claims, the Federal Circuitruled that the plain language of the claims, assupported by the specification, could beproperly construed to mean that the frameonly had to exhibit the required resiliencythat enabled the snap-secure assembly at thetime of assembly, even if increased tempera-ture was needed to achieve the requiredresiliency. Furthermore, in response to Saint-Gobain’s arguments, the Federal Circuitruled that the construction requiring that theframe only deflect at the time the glass isbeing inserted did not transform the claimlimitation into a product-by-process limita-tion because defining a structural compo-nent by its functional as well as its physicalcharacteristics is different from defining astructure solely by the process by which it ismade.

The Federal Circuit rejected Saint-Gobain’s non-infringement arguments, rul-ing that video evidence of Saint-Gobain’smanufacturing process unambiguouslyshowed that the shelf is inserted into theframe while the frame is still warm from itsmolding process and will temporarily deflectto accept the glass shelf and then reboundinto place to snap-secure the glass into thereceiving channel. The court also ruled theclaims were infringed even though theshelves in question were manufactured inMexico because the infringed claims were

See SUMMARIES page 14

Summaries from page 13

directed to an apparatus, not a process, andSaint-Gobain admittedly used and sold theshelves in the United States.

http://www.cafc.uscourts.gov/opinions/09-1001.pdf

Michele Glessner is an Associate in Alston &Bird’s Charlotte office.

Claim Interpretation: GenerallyPatentable Invention: Anticipation

Litigation Practice and Procedure: Courts: Procedure: JMOL Procedure

Claim Interpretation: Means-Plus-Function

Blackboard, Inc. v. Desire2Learn Inc., Nos. 08-1368, -1396, -1548 (Fed Cir. (E.D. Tex.) July 27, 2009). Opinion by Bryson, joined by Moore and Cudahy. The Federal Circuit affirmed the judg-

ment of the United States District Court forthe Eastern District of Texas that certainclaims were invalid as indefinite and reversedthe district court’s failure to grant Judgmentas a Matter of Law (“JMOL”) on the issue ofanticipation of other claims.

Blackboard, Inc. (“Blackboard”) suedDesire2Learn, Inc. (“Desire2Learn”), alleg-ing infringement of U.S. Patent No.6,988,138 (“the ‘138 patent”). The districtcourt entered partial summary judgment forDesire2Learn at a Markman hearing, hold-ing certain claims invalid for indefiniteness.In a subsequent jury trial for infringement ofother claims of the ‘138 patent,Desire2Learn asserted by way of defense thatthe claims were anticipated and obvious inlight of prior art that predated the patent’spriority date. The jury disagreed and thecourt held that the claims were neither antic-ipated nor obvious, and that Desire2Learnhad infringed the claims. Desire2Learn fileda motion for JMOL, which was denied, andsubsequently appealed. Blackboard cross-appealed the court’s summary judgment rul-ing on indefiniteness of certain claims of the‘138 patent.

The ‘138 patent is directed to anInternet-based educational course manage-ment system. Of particular importance iswhether the claims require that a person

using the claimed method be able to use a“single login” to access multiple courses andmultiple roles in those courses (e.g., studentin one course, teacher in another course),because the prior art cited by Desire2Learndoes not teach methods providing for a sin-gle login. The Federal Circuit rejected multi-ple arguments by Blackboard that a singlelogin was a required limitation of the claims,reasoning in part that such an interpretationof the first independent claim would rendera subsequent dependent claim redundant.The court disagreed with Blackboard’s argu-ment that Desire2Learn had waived its argu-ments regarding claim interpretation, hold-ing that although Desire2Learn took a posi-tion during the Markman hearing that wasdifferent from the position it later took attrial, the later argument was not waivedbecause the court did not rely onDesire2Learn’s interpretation andDesire2Learn made its position sufficientlyclear in time so as not to mislead the court.

In light of its finding that the claims didnot require a single login, the court held theclaims of the ‘138 patent invalid for anticipa-tion over two prior art references.Blackboard argued that becauseDesire2Learn’s JMOL motions during trialwere cursory and failed to specify the judg-ment sought and the law and the facts thatentitled it to that judgment, Desire2Learnwaived its right to file a JMOL motion aftertrial. The court held that, based on the con-text in which the motions were made ren-dered, Desire2Learn’s motion during trialwas sufficient to alert the court and theopposing party of its position.

Finally, the court considered Blackboard’scross-appeal of the district court’s ruling thatcertain claims of the ‘138 patent were indef-inite. The claims contain “means-plus-func-tion” clauses, which require an adequate dis-closure of the structure that corresponds tothe claimed function. The specification ofthe ‘138 patent describes the tasks of anaccess control manager, which assigns vari-ous levels of access to a user’s role in a course,but does not describe how this is accom-plished. The court rejected Blackboard’sargument that one of skill in the art coulddevise some means for carrying out the recit-ed function, reasoning that a patentee can-not avoid providing specificity as to structuresimply because one of ordinary skill in the

art would be able to devise a means to carryout the claimed function. To hold otherwisewould allow pure functional claiming, whichis intended to be prevented by Section 112,paragraph 6.

http://www.cafc.uscourts.gov/opinions/08-1368.pdf

Jessica Gorczynski is an Associate in Alston& Bird’s Raleigh office.

Claim Interpretation: Generally

Wavetronix v. EIS Electronic Integrated Systems, Nos. 08-1129, -1160 (Fed. Cir. (D. Utah), July 29, 2009). Opinion by Patel, joined by Newman and Schall. The Federal Circuit affirmed the U.S.

District Court’s holding of no infringement,agreeing to construe the claims for the firsttime where 1) the district court did not con-strue the claims, but referenced claim con-struction and where it was apparent thatcourt’s views on the matter had beenexhausted; 2) the parties agreed that thecourt should do so; and 3) the record wassufficiently developed to enable the court toconstrue the claim terms without prejudic-ing either party.

Wavetronix LLC (“Wavetronix”) suedEIS Electronic Integrated Systems(“EIS”),alleging infringement of U.S. PatentNo. 6,556,916 (“the ‘916 patent”). The ‘916patent is directed to an automated system foridentifying traffic lane positions for sensordevices monitoring vehicle traffic across sev-eral lanes. The district court entered an ordergranting summary judgment of noninfringe-ment and granted summary judgment toWavetronix on EIS’s counterclaims of inva-lidity and unenforceability. The court didnot enter a claim construction order at anypoint. Wavetronix appealed and EIS cross-appealed.

On appeal, only one independent claimof the ‘916 patent was in dispute and therewere no material issues of fact as to how theaccused system works. The key issue for thecourt was construction of the claim to deter-mine infringement. Specifically, the partiesdisagreed as to the meaning of the term“probability density function estimation” asused in the claim to describe the method bywhich data from a traffic sensor is used to

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define traffic lane positions. The FederalCircuit construed the term “probability den-sity function estimation” based on the disclo-sure in the specification and the recitation ofthe term within the claim language. Thecourt held that based on its construction ofthe claims, the identification of traffic lanepositions performed by EIS’s instrumentdoes not infringe the ‘916 patent, either lit-erally or under the doctrine of equivalents.Finally, the court affirmed the district court’sgrant of summary judgment on the counter-claims.

http://www.cafc.uscourts.gov/opinions/08-1129.pdf

Jessica Gorczynski is an Associate in Alston& Bird’s Raleigh office.

Litigation Practice and Procedure: Jurisdiction: Personal Jurisdiction

Touchcom, Inc., et al. v. Bereskin & Parr, et al., No. 08-1229 (Fed. Cir. (E.D. Va.) Aug. 3, 2009). Opinion by Lourie, joined by Gajarsa. Dissenting opinion by Prost.The Federal Circuit reversed the district

court’s dismissal, for lack of personal juris-diction, of a patent malpractice actionagainst a Canadian firm. The Court ofAppeals held that filing a U.S. patent appli-cation subjects the filing attorney to person-al jurisdiction in federal court for a malprac-tice claim based upon the patent application.

Touchcom retained an attorney from theCanadian firm of Bereskin & Parr (collec-tively “B&P”) to pursue patent applicationsfor a pump system invention. B&P filed aCanadian application followed by a PCTnational phase application in the U.S. TheU.S. application lacked a portion of sourcecode included in the Canadian application.Touchcom later brought a U.S. infringementaction where the district court foundTouchcom’s patent invalid for indefiniteness,based in part on the missing source code.

Touchcom sued B&P for malpractice.The district court dismissed the case for lackof personal jurisdiction. The Federal Circuitagreed that the district court lacked jurisdic-tion under Fed. R. Civ. P. 4(k)(1)(A) andVirginia’s long-arm statute because B&Placked constitutional minimum contactswith Virginia.

The Court of Appeals reversed, however,under Rule 4(k)(2), which provides jurisdic-

tion for federal claims when a defendant isnot subject to jurisdiction in any state andthe exercise of jurisdiction comports withdue process. The Federal Circuit noted thatfederal jurisdiction extends to malpracticecases where it is necessary for the court toanalyze patent claims and proof of invalidity.Regarding the requirement of showing thatthe defendant is not subject to jurisdiction inany state, the Court of Appeals adopted theapproach of several other circuits in opiningthat the burden should be on the defendantto name a state in which the suit can proceedin order to avoid jurisdiction under Rule4(k)(2). Finally, the Federal Circuit conclud-ed that exercising personal jurisdictionwould not violate due process because (1)the defendant purposefully sought andobtained a property interest in the UnitedStates; (2) the malpractice claim directly aris-es from the defendant’s act of obtaining U.S.patent protection; and (3) the exercise ofpersonal jurisdiction is reasonable and fairbecause the United States has a strong inter-est in adjudicating cases involving malprac-tice before the U.S. Patent and TrademarkOffice and the burden on the defendant isminimal.

Judge Prost dissented, arguing thatalthough there were minimum contacts withthe United States, this was a rare case inwhich exercise of personal jurisdiction wouldnevertheless violate due process. In balancingthe factors involved, she observed, for exam-ple: (1) the burden on B&P was significant,(2) the interest of the United States in thedispute was minimal, and (3) there was analternative forum available in Canada.

On Aug. 4, 2009, the court issued arevised opinion that did not alter its sub-stance.

http://www.cafc.uscourts.gov/opinions/08-1229r.pdf

Byron Holz is an Associate in Alston &Bird’s Atlanta office.

Patentable Invention: AnticipationPatentable Invention: Anticipation: Inherency

Infringement: Literal Infringement

Infringement: Contributory and Induced Infringement: Generally

Defenses: Fraud and Inequitable

Conduct: GenerallyExergen Corp. v. Wal-Mart Stores, Inc., et al., 06-1491, 07-1180 (Fed. Cir. (D. Mass.) Aug. 4, 2009). Opinion by Linn, joined by Michel and St. Eve, sitting by designation.The Federal Circuit reversed the district

court’s denial of judgment as a matter of law(“JMOL”) on three patents, holding that: (1)one patent was anticipated, and (2) there wasinsufficient evidence to support the jury’sinfringement findings for the other two. TheCourt of Appeals also affirmed the districtcourt’s denial of leave to add inequitableconduct allegations to the answer.

Exergen asserted three patents involvinginfrared thermometers for measuring humanbody temperature: 5,012,813 (“the ‘813patent”); 6,047,205 (“the ‘205 patent”); and6,292,685 (“the ‘685 patent”). Exergenobtained jury verdicts of willful infringe-ment on all three patents against defendantsS.A.A.T. Systems Application of AdvancedTechnology, Ltd. and Daiwa Products, Inc.(collectively “SAAT”). The jury awardedover $2.5 million in lost profits damages,and the trial court denied SAAT’s motionsfor JMOL.

On appeal, the Federal Circuit held thatthe asserted claims of the ‘205 patent wereanticipated by U.S. Patent No. 4,602,642(“O’Hara”). Exergen attempted to distin-guish O’Hara as lacking the step of “elec-tronically detecting . . . from the multipleareas to obtain a peak temperature signal.”The Federal Circuit disagreed, observing,inter alia, that the method of O’Hara inher-ently disclosed detecting from multiple areasof a patient’s body.

The Court of Appeals held that the evi-dence did not support the jury’s finding ofdirect infringement for the ‘813 patentbecause SAAT’s device lacked “a display forproviding an indication of internal tempera-ture.” SAAT’s device targeted the temporalartery in the forehead for measurement, butdisplayed an indication of oral temperature.Thus, there was no indication of “internaltemperature,” construed as “temperature ofthe region existing beneath the surface of thebiological tissue targeted for measurement.”The Court of Appeals also held that the evi-dence did not support the jury’s finding ofinduced infringement of the ‘685 patentbecause a customer following SAAT’sinstructions would not have infringed theasserted method claims.

See SUMMARIES page 16

Summaries from page 15

Finally, the Federal Circuit affirmed thedistrict court’s denial of SAAT’s motion toadd inequitable conduct allegations based onfailure to cite certain prior art patents andallegedly misleading arguments made duringprosecution, holding that the proposed alle-gations failed to meet Rule 9(b) pleadingstandards. The Court of Appeals held thatthe factual allegations lacked specificity, andthat allegations of scienter on “informationand belief ” were insufficient without a factu-al basis from which scienter could beinferred. In particular, the Court of Appealsnoted that the pleadings failed to providesufficient factual details needed to supportthe allegations, such as who knew of thematerial information and deliberately with-held or misrepresented it, and which claimlimitations were impacted by the allegedlymaterial information.

http://www.cafc.uscourts.gov/opinions/06-1491.pdf

Byron Holz is an Associate in Alston &Bird’s Atlanta office.

Patent Office Procedures: Prosecution Before the Office: Examination of Applications: Rejections

Patent Office Procedures: Prosecution Before the Office: Prosecution of Applications: Appeals

Litigation Practice and Procedure: Procedure: Admissibility of Evidence

Litigation Practice and Procedure: Procedure: Appellate Jurisdiction and Procedure

Hyatt v. Doll, No. 07-1066 (Fed. Cir. (D.D.C.) Aug. 11, 2009). Opinion by Michel, joined by Dyk. Dissenting Opinion by Moore. The Federal Circuit affirmed the U.S.

District Court for the District of Columbia’ssummary judgment ruling that sustained aBoard of Patent Appeals and Interferences(“Board”) decision. The Board upheld anexaminer’s rejection of seventy-nine of theone-hundred seventeen claims of Mr. Hyatt’s

U.S. Patent Application 08/471,702 (“the‘702 application”) as not supported by ade-quate written description. Mr. Hyatt pre-sented evidence to the district court that wasnot previously disclosed, despite a duty to doso, and thus that evidence was excluded fromconsideration at summary judgment.Because Mr. Hyatt offered no other evi-dence, the Federal Circuit affirmed the dis-trict court’s granting of summary judgment.

Mr. Hyatt’s ‘702 application relates tocomputer and software technology and, asoriginally filed in 1995, included fifteenclaims, a 238-page specification, and 40pages of drawings. After several amend-ments, including a claim of priority back to1975, Mr. Hyatt cancelled the originalclaims and added 117 new claims, whichwere summarily rejected by the examiner forlack of written description and enablement,double patenting, anticipation, and/or obvi-ousness.

On appeal to the Board and continuingto represent himself, except for two limita-tions, Mr. Hyatt did not separately addressor indicate where in the specification sup-port could be found for the numerous claimlimitations the examiner determined lackedsupport. As a result, the Board sustained thewritten description and enablement rejec-tions for seventy-nine claims. A request forrehearing was denied by the Board.

Afterwards, and acting through counsel,Mr. Hyatt filed a district court action under35 U.S.C. § 145 against the Director. Inresponse, the Director moved for summaryjudgment, arguing principally that theBoard’s decision to reject all of the claims ofthe ‘702 application was supported by sub-stantial evidence. Mr. Hyatt provided a dec-laration as well as briefing from his requestfor rehearing as purported evidence in oppo-sition to the Director’s motion for summaryjudgment. The Director objected to Mr.Hyatt’s declaration on the ground that Mr.Hyatt had failed to timely submit it to theBoard. The district court agreed with theDirector, and excluded the Hyatt declarationfrom consideration because of Mr. Hyatt’snegligent failure to submit it to either theU.S. Patent and Trademark Office (“PTO”)during examination or the Board on appeal.Because the district court found no genuineissues of material fact were raised by Mr.Hyatt, it granted summary judgment infavor of the Director.

The Federal Circuit addressed the stan-dard that governs a district court in § 145actions when ruling on the admissibility ofevidence withheld during patent examina-tion in the PTO. Mr. Hyatt requested a denovo trial and argued that the only limita-tions imposed were those of the FederalRules of Evidence. In contrast, the Directorargued that § 145 actions are at least partly aform of appeal of PTO decisions; thus, evi-dence not submitted to the PTO throughthe negligence of the applicant is properlyexcluded at the district court level. In hold-ing that the district court properly excludedMr. Hyatt’s declaration, the Federal Circuitrelied on the 80-year-old practice of federalcourts excluding evidence that a party couldand should have introduced to the PTO.Moreover, the Federal Circuit held that theadmission of new evidence in a § 145 actionis limited by the Administrative ProcedureAct. Thus, the Federal Circuit dismissed Mr.Hyatt’s arguments for a de novo trial.

In dissent, Judge Moore criticized themajority for taking away this patent appli-cant’s fundamental right to a civil action toobtain a patent as provided by § 145.Specifically, Judge Moore stated there was noaffirmative duty or obligation for Mr. Hyattto fulfill. Further, if there was such a duty orobligation, the withholding of the evidenceshould be accompanied by willful withhold-ing or intentional suppression before the trialcourt can exclude the evidence.

http://www.cafc.uscourts.gov/opinions/07-1066.pdf

Matthew Howell is an Associate in Alston &Bird’s Atlanta office.

Patentable Invention: Anticipation: Prior Publication

Patentable Invention: Obviousness: GenerallyClaim Interpretation: Generally

Infringement: GenerallyDefenses: InvalidityRemedies: Injunctions: Permanent

Injunctions

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Litigation Procedure: Procedure: Summary Judgment: Sufficiency of Evidence

Litigation Procedure: Procedure: JMOL Procedure

Litigation Procedure: Procedure: Stipulations

Callaway Golf Co. v. Acushnet Co., No. 09-1076 (Fed. Cir. (D. Del.) Aug. 14, 2009). Opinion by Dyk, joined by Linn and Prost.The Federal Circuit reversed the U.S.

District Court for the District of Delaware’sentry of summary judgment becauseAcushnet Co. (“Acushnet”) had raised a gen-uine question of material fact concerning theanticipation of four golf ball patents ownedby Callaway Golf Company (“Callaway”):U.S. Patent Nos. 6,210,293 (“the ‘293patent”); 6,503,156; 6,506,130; and6,595,873 (the “Sullivan Patents”).Moreover, the Federal Circuit affirmed thedistrict court’s determination that Acushnetwas not entitled to judgment as a matter oflaw that the asserted claims of the SullivanPatents are invalid for obviousness. Further,because the result of the jury on obviousnesswas based on an irreconcilably inconsistentverdict, the Federal Circuit vacated the dis-trict court’s judgment and remanded for anew trial.

The Sullivan Patents claim similar inven-tions of a multi-layer polyurethane-coveredgolf ball. Callaway sued Acushnet forinfringement of the Sullivan Patents in theDistrict of Delaware over Acushnet’s TitleistPro V1 golf balls. The Pro V1 is a “dual-core”ball that has an inner core, an outer core, anionomer inner cover, and a polyurethaneouter cover. The court then construed vari-ous terms of the Sullivan Patents, including“cover layer having a Shore D hardness.”Shore D is a standard hardness scale that isknown in the art. The court construed thatterm to require a Shore D hardness measure-ment of the cover layer be taken on the ballitself. Based on that construction, Acushnetstipulated that its accused products infringedall of the asserted claims of the Sullivanpatents.

Subsequently, Acushnet moved for sum-mary judgment on both obviousness andanticipation of the Sullivan Patents.Acushnet’s arguments were based on U.S.Patent 4,431,193 to Nesbitt (“the ‘193patent”), allegedly incorporating U.S. Patent

4,274,637 to Molitor (“the ‘637 patent”).Callaway filed a cross motion of no anticipa-tion, arguing that the ‘193 patent did notincorporate the ‘637 patent and thus failedto disclose the necessary Shore D limitation.The district court granted Callaway’s motionfor summary judgment of no anticipation.

Regarding obviousness, Acushnet reliedon the ‘193 patent, the ‘637 patent, andthree additional patents. At the conclusionof a jury trial on obviousness, the juryreturned a verdict that eight asserted claims,including independent Claim 4 of the ‘293patent, were not obvious, but that Claim 5of the ‘293 patent, which depends on Claim4, was obvious. The district court granted apermanent injunction against Acushnet afterdenying a motion for judgment as a matterof law on the eight claims held not invalid.

Five issues were addressed on appeal.First, the Federal Circuit rejected Acushnet’sclaim construction argument that Shore Dhardness had to be determined on a flat sur-face unlike a golf ball, citing portions of thespecification of the ‘293 patent that evi-denced testing Shore D hardness on the ballitself and Acushnet’s own trial testimony.Second, regarding obviousness, the FederalCircuit affirmed the district court’s rulingthat a jury could have reasonably concludedthat Acushnet failed to prove invalidity dueto obviousness, particularly concerning theclaimed hardness limitation. Third, theFederal Circuit held that two evidentiary rul-ings by the district court, one excluding tes-timony concerning measurements per-formed on golf balls and the other evidenceof parallel inter partes reexamination, wereproper as they related to the issue of obvious-ness. Fourth, the Federal Circuit determinedthat the jury verdicts with respect to theobviousness of Claim 4 of the ‘293 patentand non-obviousness of dependent Claim 5were inconsistent and required a new obvi-ousness trial on those claims. Finally, con-cerning anticipation, the Federal Circuitheld that the ‘193 patent incorporated thecompositions taught by the ‘637 patent, andthus reversed the district court’s granting ofsummary judgment to Callaway

http://www.cafc.uscourts.gov/opinions/09-1076.pdf

Matthew Howell is an Associate in Alston &Bird’s Atlanta office

Infringement: Contributory and

Induced Infringement: Generally

Remedies: Damages: GenerallyRemedies: Damages: Reasonable Royalty

Litigation Practice and Procedure: Procedure: Waiver

Cardiac Pacemakers, Inc., et al. v. St. Jude Medical, Inc., et al., Nos. 07-1296, -1347 (Fed. Cir. (S.D. Ind.) Aug. 19, 2009). Opinion sections A, B, C.1, and D by Lourie, joined by Mayer and Newman. Opinion section C.2 by Lourie, joined by Michel, Mayer, Rader, Schall, Bryson, Gajarsa, Linn, Dyk, Prost, and Moore. Opinion dissenting in part by Newman. Affirming the district court and vacating

the earlier panel opinion, the Federal Circuitheld that 35 U.S.C. § 271(f ) does not applyto method claims. Regarding damages forinfringement of method claims, the FederalCircuit ruled that a patentee may onlyreceive royalty damages on those devices that“actually perform” the patented method dur-ing the relevant infringement period. Inaddition, the Federal Circuit held that achange in claim construction on appealreopens at the district court only those issuesdirectly related to the changed claim con-struction.

Cardiac Pacemakers, Inc., Guidant SalesCorp., Mirowski Family Ventures, LLC, andAnna Mirowski (collectively “Cardiac”) suedSt. Jude Medical, Inc. and Pacesetter, Inc.(collectively “St. Jude”) for infringement ofpatents covering implantable cardioverterdefibrillators (“ICDs”). At issue on appealwas Claim 4 of U.S. Patent No. 4,407,288(“the ‘288 patent”), which covers a methodof using an implantable heart stimulator todetect arrhythmias and perform cardiover-sion.

At trial in the U.S. District Court for theSouthern District of Indiana, a jury foundthe ‘288 patent valid and enforceable, butnot infringed by St. Jude’s ICDs. The districtcourt, however, later granted St. Jude’smotion for judgment as a matter of law forinvalidity due to obviousness. On appeal, theFederal Circuit reversed and held that thedistrict court had erred in its construction ofClaim 4. On remand, the district courtdenied St. Jude’s motion for summary judg-ment of inequitable conduct, but granted

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summary judgment limiting damages. Afterthe Federal Circuit declined to grant a writallowing St. Jude to assert invalidity andinequitable conduct defenses, the districtcourt granted St. Jude’s motion for summaryjudgment of invalidity for anticipation.

On appeal, the Federal Circuit firstreversed the district court’s grant of summa-ry judgment of invalidity due to anticipa-tion. The court held that anticipation wasnot properly before the district court onremand as St. Jude had only asserted obvi-ousness at trial. The court ruled that thejury’s determination that the ‘288 patent wasnot invalid for obviousness did not dependon the district court’s erroneous claim con-struction. As the changed claim constructiondid not present any new issues directly relat-ed to anticipation, the court held that St.Jude’s anticipation arguments had beenwaived. The court also held that St. Jude’sinequitable conduct arguments had alsobeen waived as a result of failure to pursuethe arguments at trial, failure to appeal thearguments, and a stipulation by the parties.

Next, the Federal Circuit affirmed thedistrict court’s ruling limiting royalty dam-ages to those ICDs that actually performedthe method of Claim 4. The court rejectedCardiac’s argument that damages may begranted for sales of ICDs shown to be capa-ble of performing the claimed method. Inaddition, the court ruled that St. Jude hadnot waived its argument to limit damages asapparatus claims at issue during trial meantthat St. Jude would not have then benefitedfrom its arguments on appeal.

Hearing the final issue en banc, theFederal Circuit held that 35 U.S.C. § 271(f )does not apply to method or process claimsand overruled its earlier decision in UnionCarbide v. Shell Oil, 425 F.3d 1366 (2005).Section 271(f ) makes liable for infringementthose who supply “components” of a patent-ed invention in a way that induces or con-tributes to the combination of those compo-nents outside of the United States that wouldinfringe the patent if the combinationoccurred within the United States. Holdingthat the “components” of a method claim arethe steps of the method, the Court ofAppeals ruled that the steps of a claimedmethod could not be “supplied” as requiredby the statute. The en banc court also citedthe statute’s legislative history and the overallstatutory scheme to support its conclusion.

Dissenting from the en banc opinion,Judge Newman argued that the statute’sunambiguous language makes clear thestatute applies to all patented inventions,including methods; hence, the majority’sopinion opens a loophole in the statute notintended by Congress.

http://www.cafc.uscourts.gov/opinions/07-1296.pdf

Christopher Kelly is an Associate in Alston& Bird’s Atlanta office.

Litigation Practice and Procedure:Jurisdiction: Standing

Character of a Patent: Attributesof Ownership: Generally

Sky Technologies LLC v. SAP AG, et al.,No. 08-1606 (Fed. Cir. (E.D. Tex.) Aug. 20,2009). Opinion by Spencer, before Micheland Bryson.

The Federal Circuit affirmed the districtcourt’s denial of a motion to dismiss for lackof standing, holding that transfers of patentownership by operation of law may occurwithout a written agreement. In so holding,the Federal Circuit clarified that the PatentAct requires only that assignments of patentsbe in writing.

Sky Technologies LLC (“Sky”) sued SAPAG and SAP America, Inc. (“SAP”) forinfringement of various U.S. patents. Thepatents at issue were part of a portfolio ofpatents obtained by a predecessor companyof Orzo, Inc. (“Orzo”), a company foundedby Sky’s founder in 1996. Upon obtainingthe patents, Orzo executed two IP securityagreements. The later of the two agreementswas entered into with Cross Atlantic CapitalPartners, Inc. (“XACP”). The former agree-ment was entered into with another bankand later assigned to XACP. Both agreementsprovided XACP with the right to sell thepatent portfolio at a public or private saleand, additionally, the right to purchase thepatents at a public sale. In 2003, Orzodefaulted on its loan obligations and, pur-suant to the agreements, XACP foreclosedon its security interests at public auction.XACP purchased all of the patents and sub-sequently assigned the patents to Sky. At nopoint after the foreclosure, however, didOrzo execute a written agreement assigningits rights in the patents to XACP. In 2006,

Sky sued SAP alleging infringement ofpatents it acquired from XACP.

The U.S. District Court for the EasternDistrict of Texas denied a motion by SAP todismiss Sky’s complaint for lack of standing.SAP argued that Sky did not hold legal titleto the patents-in-suit because no writingexisted transferring title in the patents toXACP. The district court held that, becauseXACP complied with the relevantMassachusetts Uniform Commercial Coderequirements, title was properly transferredto XACP on the date of the foreclosure and,accordingly, Sky was the proper title-holderof the patents. The district court did, howev-er, grant SAP’s motion for certification ofquestion for interlocutory appeal regardingwhether “a transfer of title through operationof law without a written assignment mayapply in situations that do not involve heirsor probate law.”

Affirming the district court’s ruling, theFederal Circuit held that transfers of patentownership by operation of law may occurwithout a writing. In so holding, the courtruled that, although its prior decision to thesame effect in Akazawa v. Link New Tech.Int’l, Inc., 520 F.3d 1354 (2008) was direct-ed to the transfer of patent ownership byoperation of law to heirs, neither Akazawanor 35 U.S.C. § 154 restrict transfers ofpatent ownership by operation of law to acertain class of individuals. The courtemphasized that while the Patent Actrequires that all assignments of patent inter-est be in writing, it does not require the sameof other means for transferring patent own-ership, such as by operation of law.Accordingly, the court noted that 35 U.S.C.§ 261 does not preempt Massachusetts statelaw on the issue as § 261 applies only toassignments of patents. Agreeing with thedistrict court that XACP complied withMassachusetts state law in acquiring thepatent rights, the Federal Circuit held thatSky had proper title to the patents-in-suit.

http://www.cafc.uscourts.gov/opinions/08-1606.pdf

Christopher Kelly is an Associate in Alston& Bird’s Atlanta office.

Patentable Invention: Anticipation: Generally

IP LINKS 19

The Patent Application: Specification: Written Description

The Patent Application: Claims: Indefiniteness

The Patent Application: Claims: Preamble, Transition, and Limitations

In re Skvorecz, No. 08-1221 (Fed. Cir. (B.P.A.I.) Sept. 3, 2009). Opinion by Newman, joined by Friedman and Mayer.In reversing a finding of anticipation, the

Federal Circuit ruled that use of the transi-tion term “comprising” does not render aclaim anticipated by a device that containsless (rather than more) than what is claimed,and such finding of anticipation by theBoard of Patent Appeals and Interferences(“Board”) cannot be justified under theexamination expedient of “giving claimstheir broadest reasonable interpretation.”The Federal Circuit also reversed the Board’sfindings of indefiniteness and lack of writtendescription, ruling the rejections had beenimproperly applied since the combination ofthe specification and the figures providedsufficient support for the claim language in acase around the mechanical arts.

Robert Skvorecz is the owner of U.S.Patent No. 5,996,948 (“the ‘948 patent”),which is directed to a wire chafing stand.Claim 1 of the ‘948 patent recites that “eachwire leg” has an offset permitting nesting ofmultiple stands without the stands becominginseparably wedged. Skvorecz sought re-issuance of the ‘948 patent, the examinerrejected several claims as anticipated by U.S.Patent No. 5,503,062 (“the ‘062 patent”),and Skvorecz appealed. The Board sustainedthe anticipation rejection and entered newgrounds of rejection, alleging indefinitenessand lack of sufficient written description inrelation to certain claim terms, and Skvoreczappealed.

On appeal, the Federal Circuit agreedwith Skvorecz that the component of the‘062 patent alleged by the Board to be a“transverse member” was in fact a leg thatdid not include the recited offset. Further,the court ruled the Board erred in construingthe use of the open-ended “comprising” pre-amble to mean that some wire legs of theSkvorecz device, as claimed, need not havean offset, as expressly claimed, and that theprotocol of giving claims their broadest rea-

sonable interpretation during examinationdoes not include giving claims a legallyincorrect interpretation. Thus, the anticipa-tion rejection was reversed.

Addressing the Board’s indefinitenessrejection of Claim 5 for use of the phrase “atthe separation,” the court ruled that Figures2 and 3 sufficiently disclosed “the separa-tion” for a person of ordinary skill in the artto understand the claim and that the lack ofexplicit antecedent basis in the claims didnot lead to indefiniteness. In remanding,however, the Federal Circuit agreed that anamendment suggested by the Board could beimplemented.

Finally, in considering the Board’s findingthat the claim phrase “a plurality of offsetslocated . . . in said first rim” was not suffi-ciently described in the specification, theFederal Circuit ruled this was unsupportedby substantial evidence and reversed theBoard. In so doing, the Federal Circuitpointed to its previous holding that the dis-closure obligation varies according to the artto which the invention pertains, and thecourt noted that Figures 12 and 13, eventhough only partial figures, sufficientlydescribed the offsets because other figures ofvarious embodiments illustrated the fullstructure in sufficient detail so that a skilledperson in the mechanical arts would under-stand the specification, including the draw-ings, as showing the offsets and the lateraldisplacement of each wire leg. The case wasthus reversed and remanded for further pro-ceedings.

http://www.cafc.uscourts.gov/opinions/08-1221.pdf

Chris Lightner is an Associate in Alston &Bird’s Atlanta office.

Patentable Invention: Anticipation: Corroboration

The Patent Application: Specification: Written Description

The Patent Application: Specification: Enablement Requirement

Claim Interpretation: GenerallyClaim Interpretation: Intrinsic

Evidence: SpecificationClaim Interpretation: Intrinsic

Evidence: Prosecution

DisclaimerClaim Interpretation: Extrinsic

Evidence: GenerallyInfringement: GenerallyDefenses: InvalidityLitigation Practice and Procedure:

Procedure: JMOL Procedure

Martek Biosciences Corp. v. Nutrinova, Inc., et al., No. 08-1459 (Fed. Cir. (D. Del.) Sept. 3, 2009). Opinion by Gajarsa, joined by Newman and Moore. Opinion dissenting in part by Lourie, joined by Rader.The Federal Circuit considered the grant

and denial of several motions for judgmentas a matter of law (“JMOL”). In so doing,the court ruled that: expert testimony onwhat a skilled person would draw from thespecification was sufficient to support ajury’s findings around written descriptionsufficiency; comparative testing was not nec-essarily required to prove infringement as amatter of law; an abandoned patent applica-tion by a purported prior inventor is insuffi-cient to corroborate testimony by the allegedprior inventor regarding the prior inventorstatus; and the express definition of a claimterm within the specification is determina-tive over extrinsic definitions.

Martek Biosciences Corp. (“Martek”)sued Nutrinova, Inc., Nutrinova NutritionSpecialties and Food Ingredients GmbH,and Lonza, Inc. (collectively “Nutrinova”)for infringement of Martek’s U.S. PatentNos. 5,340,594 (“the ‘594 patent”),6,410,281 (“the ‘281 patent”), 6,451,567(“the ‘567 patent”), and 5,698,244 (“the‘244 patent”), all directed toward processesfor extracting docosahexaenoic acid (DHA),an omega-3 fatty acid essential in the humandiet. After a jury verdict that asserted claimswere infringed and not invalid, the districtcourt granted Nutrinova motions for JMOLthat the claims of the ‘567 patent wereinvalid and granted Martek’s motion forJMOL requesting a permanent injunction.

On appeal, the Federal Circuit ruled thedistrict court did not err in denying JMOLthat the ‘594 patent was invalid as anticipat-ed. Reviewing the jury’s conclusions for sub-stantial evidence, the Federal Circuit heldMartek’s expert testimony that a skilled per-son viewing the specification of the ‘594patent would be able to identify a “mixedculture” and its use as “food additives” pro-

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vided evidence supporting the jury’s conclu-sions. The Federal Circuit, however, reversedthe grant of JMOL that Claims 4 and 5 ofthe ‘567 patent were invalid for lack ofenablement holding that Nutrinova failed topresent proper evidence that undue experi-mentation would be required to practice theinvention recited in said claims.

The Federal Circuit affirmed the denial ofJMOL that the ‘281 patent was notinfringed, holding that testimony byMartek’s two experts provided proper evi-dence to support the jury’s conclusions. In soholding, the Federal Circuit rejectedNutrinova’s argument that proving infringe-ment, as a matter of law, required actualcomparative testing.

The Federal Circuit affirmed the districtcourt’s exclusion of Nutrinova’s prior inven-

torship evidence holding that an abandonedpatent application by the purported priorinventor was insufficient to corroborate thealleged prior inventor’s testimony. TheFederal Circuit also affirmed the claim con-struction of the term “non-chloride sodiumsalt” to include NaOH, noting that mixedstatements in the prosecution history do notprovide the clear and unmistakable disavow-al of claim scope required for prosecutiondisclaimer. The Federal Circuit, however,reversed the district court’s claim construc-tion of the term “animal” in the ‘244 patentholding that an express definition of theterm in the specification was controlling,even though contrary to the proposed con-ventional meaning. The case thus wasaffirmed in part, reversed in part, andremanded for further proceedings.

The dissent disagreed with the decisionaround the claim term “animal” and arguedthat the specification, when read as a whole,created a distinction between humans andanimals when explaining the acid extractionprocess from animals for human intake.They thus argued that the claim term shouldhave been read in a manner comporting withthe specification as a whole and not simplywith a single sentence, even one purportingto be a definition that is inconsistent withthe remainder of the specification.

http://www.cafc.uscourts.gov/opinions/08-1459.pdf

Chris Lightner is an Associate in Alston &Bird’s Atlanta office.

To: NCBA Intellectual Property Law Section MembersFrom: Darrell Fruth, Chair, Pro Bono CommitteeRe: PRO BONO AWARD NOMINATIONS

Nomination form and additional details regarding the award process can be accessed athttp://intellectualpropertylaw.ncbar.org/media/2280597/outstandingachievement-probonoaward.pdf

It’s that time of year again that we ask you to PLEASE take a moment and consider whetheryou feel that you, or any of your colleagues, or any firm, corporate legal department orother organization are deserving of this year’s Outstanding Achievement Pro Bono Award.The award is given annually by the IP Section of the North Carolina Bar Association to anIP Section member individual and to an organization who devoted considerable and sub-stantive pro bono time and effort during the previous year. If you know of any candidatesthat may be deserving, please take a few minutes to nominate them now. The deadline fornominations is Friday, March 5, 2010. Please submit all nominations to Lynda B. Imhoff,NC Bar Association, P O Box 3688, Cary, NC 27519-3688; E-mail: limhoff@ncbar.org; fax(919) 677-0761.

The awards will be presented at the Section’s annual meeting on Friday, April 9, 2010 at theGrandover Resort in Greensboro, NC. A commemorative plaque will be given to each win-ner and a donation in each winner’s name will be made by the IP Section to Legal Servicesof North Carolina.

Please feel free to submit nominations using any convenient method, generally followingthe format of the nomination form at the following link: http://intellectualpropertylaw.ncbar.org/media/2280597/outstandingachievement-probonoaward.pdf

Thanks for your time and consideration!

IP LINKS 21

Of those who qualify to receive legal services from Legal Aid ofNorth Carolina (LANC), three of four must be turned away

because LANC lacks the resources to help.

To improve these numbers, the North Carolina Bar AssociationFoundation has established the LANC Fund for the exclusive benefit ofLegal Aid of North Carolina. The LANC Fund is a key part of the 2007-08 4ALL Campaign.

For the first time ever, NCBA members have an opportunity to donate tothe LANC Fund on their dues statement. Members may also visithttp://www.ncbar.org/lancFundDonateNow to access the donation formonline.

Help build the long-term financial viability of Legal Aid of NorthCarolina and fulfill our professional responsibility to provide justice for all.

For more information about donating, including planned giving,contact Tom Hull at thull@ncbar.org.

Donate tothe LANC Fund

One in six people now live in poverty in North Carolina.

NORTH CAROLINA BAR CENTER

PO Box 3688Cary, NC 27519-3688