Welcome to Winston & Strawn’s Federal Circuit Patent Decision Summaries. This bulletin provides a short summary of, and links to, the precedential patent cases decided by the Federal Circuit last week. We hope that these summaries are useful in keeping you updated on the Federal Circuit’s patent decisions.

A manufacturer failed to show a "substantial controversy" supporting a declaratory judgment action because the manufacturer did not take steps to perform the patented method and there was no evidence about the manufacturer’s customers' use of the manufacturer’s products to perform the patented methods.

Matthews Int’l Corp. v. Biosafe Engineering, LLC, No. 2012-1044 (Fed. Cir. Sept. 25, 2012).

A manufacturer of alkaline hydrolysis equipment for disposal of human remains brought a declaratory judgment action for non-infringement, invalidity, and unenforceability against a holder of method patents relating to alkaline hydrolysis waste disposal, who had asserted by phone, letter, and communications to the manufacturer’s customers that the sale and use of the manufacturer’s equipment would infringe on its method patents. The district court granted the patentee’s motion to dismiss, concluding that the constitutional requirements for declaratory judgment jurisdiction were lacking because the licensee’s equipment could be operated with parameters outside the methods specified in the patents. 

The Federal Circuit affirmed the district court’s determination, holding that the manufacturer failed to show a "substantial controversy" that was "of sufficient immediacy and reality to warrant the issuance of a declaratory judgment." Specifically, the dispute lacked immediacy because the manufacturer did not practice any of the methods disclosed in the patents and had presented no evidence that its products would be used in a manner that could potentially infringe the patents. Any potential future infringement by the [manufacturer’s] customers was "too remote and speculative" to support a declaratory judgment action. 

In addition, the dispute lacked sufficient reality because the manufacturer failed to provide information regarding the specific parameters under which its units would be operated, making it impossible to determine whether operation of the equipment could meet claim limitations in the patents. Rather than being "substantially fixed," the technology under dispute was "fluid and indeterminate," and any judicial determination as to whether the operation of the manufacturer’s products would infringe the patents "would constitute an advisory opinion based upon a hypothetical set of facts."

A copy of the opinion can be found here. 

A limitation for external cables or wires cannot be read into a claim where this element is only disclosed by a statement in the specification addressing deficiencies in the prior art.

In Re Diabetes Care Inc., No. 2011-1516, -1517 (Fed. Cir. Sept. 28, 2012).

The patents at issue cover methods and devices for monitoring and reporting an analyte in the bloodstream, and using an electromagnetic sensor to provide that information to a patient. The patentee filed a lawsuit in United States District Court for the District of Delaware and the defendants requested an ex parte reexamination before the PTO. After losing before the Board of Patent Appeals and Interferences (the "Board"), and having its requests for rehearing denied, the patentee appealed the Board's decision to reject multiple claims of the patents under ex parte reexamination. The Federal Circuit vacated the rejections and remanded to the Board for additional proceedings.

The common specification of the patents described shortcomings of the prior art devices that used wires and cables to connect components of the machines that restricted patients’ range of motion. In its review of the examiner’s rejection, the Board construed the term, "electrochemical sensor" to include external cables or wires even though this element was only included in a single statement in the specification that discussed the prior art. Under this construction, the Board determined that the claims were invalid. In its unsuccessful requests for rehearing, the patentee argued that the Board improperly relied on a statement in the patents’ specification to read the limitation into the claim.

At issue here was whether or not the broadest possible construction of "electromechanical sensor" included external cables and wires. On appeal, the PTO argued that the patentee was required to make a "clear disavowal" or "express disclaimer" of the claim scope to exclude this limitation from the claim.

Under Federal Circuit precedent, "[a]lthough the PTO emphasizes that it [is] required to give all claims their broadest reasonable construction, . . . this court has instructed that any such construction be consistent with the specification." The Federal Circuit held that here, where the only mention of a sensor with external cables or wires was a single statement addressing deficiencies in the prior art, this limitation could not be read into the claim.

A copy of the opinion can be found here.