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.

In patent claims, the singular definite articles “a” and “an” are construed to mean “one or more” unless the claims, specification, or prosecution history clearly suggest otherwise.

01 Communique Lab., Inc. v. LogMeIn, Inc., No. 2011-1403 (Fed. Cir. July 31, 2012).

The patentee of technology that enables computers to access one another remotely via the Internet brought suit against an alleged infringer. The district court construed the crucial claim term “location facility” as a multifunctional component contained on a single physical computer. Because the alleged infringer’s technology spread the functionalities of the “location facility” across multiple computers, the district court granted summary judgment of noninfringement.

The Federal Circuit vacated the district court’s decision. Reviewing the construction of “location facility” de novo, the Federal Circuit concluded that the district court improperly interpreted the patent’s use of singular articles and pronouns to mean that the functions of the “locator facility” had to be performed on a single computer. In patent claims, the words “a” and “an” carry the meaning, “one or more,” even if later portions of the patent refer back to the claims using definite articles. This rule of construction applies unless the claims, specification, or prosecution history clearly necessitate a departure; mere ambiguity or inconsistent usage of the singular and plural is insufficient to overcome application of the general rule.

The Federal Circuit also rejected the alleged infringer’s arguments that the patentee had disclaimed a multiple-location “location facility” during an inter partes reexamination of the patent. The expert statements the alleged infringer relied on did not address whether the “location facility” could be distributed across several computers. Additionally, the patentee’s cancellation of one of several claims disclosing multiple locator server computers did not undermine the examiner’s finding that the specification “clearly” contemplated the use of more than one physical computer.

A copy of the opinion can be found here. 

Post-approval studies of generic drugs that are “reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs,” fall within the scope of the Hatch-Waxman Act safe harbor, 35 U.S.C. § 271(e)(1).

Momenta Pharms., Inc. et al. v. Amphastar Pharms., Inc. et al., Nos. 2012-1062, -1103, -1104 (Fed. Cir. Aug. 3, 2012).

The patentee of a quality analysis method used in the production of a generic drug brought suit against another generic drug manufacturer, alleging that the competitor infringed the patent each time it conducted an analytical test on each batch of drugs to determine the presence and amount of a certain non-naturally occurring sugar, which validated the drug product. The district court issued a preliminary injunction against the alleged infringer. The alleged infringer appealed, and the Federal Circuit stayed the injunction. A divided panel ultimately vacated the injunction.

The majority concluded that the alleged infringer’s testing fell within the scope of the Hatch-Waxman Act safe harbor, 35 U.S.C. § 271(e)(1), which provides that use of patented technology is not infringing when it is “solely for uses reasonably related to the development and submission of information under a federal law which regulates the manufacture, use, or sale of drugs.” The majority determined that this language was unambiguously broad enough to encompass submissions made pursuant to the Federal Food, Drug, and Cosmetic Act and did not consult the statute’s legislative history. The majority also concluded that the generation of data for potential FDA inspection could constitute a “submission” for purposes of the safe harbor.

The majority distinguished Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1070 (Fed. Cir. 2011), in which it held that § 271(e)(1) “does not apply to information that may be reported to the FDA long after marketing approval has been obtained.” This case fit “well within [the rule established by] Classen” because in applying the rule, the information submitted was not routine but rather was essential both to the continued approval of the alleged infringer’s ANDA and to its ability to market the generic drug. Even if there were other ways to perform the testing, the alleged infringer’s actions would still fall within the safe harbor because the only limitation in the provision is the “reasonably related” one. 

Noting the Supreme Court’s observation that § 271(e)(1) is “not plainly comprehensible,” Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 661, 669 (1990), the dissent looked to legislative history and concluded from it that the safe harbor was intended to apply only in pre-approval experimentations, not to commercial sales. The dissent further argued that the majority’s position could not be squared with Classen, Eli Lilly, and Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. 193 (2005) and called for the case to be reheard en banc. It also contended that the majority’s interpretation disincentivized innovation and could render manufacturing method patents worthless in cases involving FDA regulatory testing. 

A copy of the opinion can be found here. 

When applying the doctrine of prosecution disclaimer to reexaminations, an inventor must make a clear and unmistakable disavowal of scope, and additionally, a complete patent infringement analysis on summary judgment requires a district court to place the accused device alongside each asserted claim.

Grober v. Mako Prods. Inc., Nos. 2010-1519, -1527 (Fed. Cir. July 30, 2012).

The patentee invented a platform that stabilizes a camera for filming motion pictures from moving vehicles. Two years after the patentee filed its infringement suit, the district court held a Markman hearing and construed the claim term “payload platform.” Prior to the hearing, the parties agreed, should the court adopt the alleged infringer’s construction of the term “payload platform,” there would be no infringement by the accused device. Thus, after construing the term in the alleged infringer’s favor, the district court sua sponte concluded that the alleged infringer did not infringe any asserted claim—including claims that did not include the term at issue. The patentees filed a motion to vacate the district court’s summary judgment order, which was denied. Then the district court issued its final judgment of noninfringement and the patentees timely appealed to the Federal Circuit, which had jurisdiction under 28 U.S.C. §§ 1292(c)(1) and 1295(a)(1).

The Federal Circuit, notably, reviewed two of the district court’s decisions. First, it reviewed the district court’s claim construction without deference  and concluded that the district court erred in construing the claim term “payload platform.” Second, it reviewed the district court’s decision concerning summary judgment under the law of the regional circuit—here the Ninth Circuit—which reviews a grant of summary judgment without deference; ultimately vacating the district court’s grant of noninfringement summary judgment.

Before the Markman hearing, the parties proposed competing constructions of the terms “payload platform.” Relying heavily on the reexamination history and prior art, the district court construed the claim term “payload platform” to mean “the horizontal plate, piece of surface upon which the device (e.g., a camera) is directly mounted upon or affixed to.” Most notably, the district court emphasized the patentee’s following statements distinguishing his invention from the prior art: 1) explaining that the prior art does not teach “the second sensor package being fixed to the payload platform;” 2) asserting that the prior art “never uses the word ‘fixed to’ or ‘mounted on’...and are clearly not ‘fixed to’ and most definitely not ‘wholly fixed to’ the platform structure;” and 3) arguing that the prior art “clearly discloses [that the sensor system] is not fixed to the payload platform as suggested by requestor and listed as part of the examiner’s rejection.” In vacating the district court, the Federal Circuit held that these statements made during reexamination do not unambiguously focus on the “payload platform” characteristics nor distinguish it from the prior art. Rather, they refer to the placement of the prior art sensors in relation to the “payload platform.” Thus, the reexamination commentary cannot fairly limit the characteristics of the claim term. 

Next, the Federal Circuit acknowledged that the district court’s power to enter summary judgment sua sponte, but noted that this power does not allow it to bypass performing a complete patent infringement analysis. Specifically, the Federal Circuit held that there was concern with the dispositive nature of the proposed claim construction because the alleged infringer stated that “virtually every claim except for maybe five or six require the payload platform.” Thus, a construction in the patentee’s favor would not necessarily mean that there was no infringement by the alleged infringer. As such, the Federal Circuit concluded that the district court only conducted the first step—determined the scope and meaning of the asserted patent claims—of the two-step analysis for finding patent infringement. It, however, failed to perform the second step, because—as mentioned above—several claims did not include the construed term. For that reason, the court highlighted that “the trial court did not place the accused device alongside each asserted claim for a complete comparison.” 

A copy of the opinion can be found here. 

The doctrine of claim differentiation is at its strongest where the limitation that is sought to be “read into” an independent claim already appears in a dependent claim and is the only meaningful difference between the claims. The failure of an inventor to disclose an alternative embodiment in the patent specification, despite having contemplated it, does not justify excluding that embodiment from the coverage of the claims.

Interdigital Commc’ns, LLC v. Int’l Trade Comm’n, No. 2010-1093 (Fed. Cir. Aug. 1, 2012).

On appeal from the International Trade Commission (ITC), the Federal Circuit reversed the ITC’s finding of noninfringement based on errors construing critical claim terms in the patents-at-issue.

The technology that the patents-at-issue are directed to is the transmission of unique codes from a cellphone to a cellular base station to establish a communication link that transmits the telephonic message. At issue were the administrative law judge’s construction of the following claim terms (1) “code” was limited to a “spreading code” which is used to increase the bandwidth of another signal; and (2) “increased power level”  required that “the power level of the code signal [continuously] increases during transmission.” The court found that the ITC erred in not according these claim terms their ordinary meaning.

The court held that the “code” claim term is not limited to a “spreading code” because neither the specification nor the prosecution history provided a restrictive definition of the claim term. Furthermore, according to the court, the doctrine of claim differentiation provides a powerful argument against construing the term code restrictively because the restriction of a “spreading code” is recited in a dependent claim. The Federal Circuit found this to be an “especially strong” argument because there would be no meaningful difference between the independent and dependent claims if “spreading code” were read into the independent claim. The court found the ITC erred in relying on the fact that the specification identified only spreading codes. Further, the ITC erred because its definition of “spreading code” differed from the expert witnesses and would exclude preferred embodiments in the specification from falling within the scope of the claims. Such a result is rarely, if ever, the correct construction.

The court held that the “increased power level” term was not limited to embodiments featuring continuous increases in power during the transmission process. Rather, the term also includes embodiments, such as the accused infringing device, that employ discrete power increases that occur between individual transmissions. The court found that the plain meaning of the term is not limiting to continuous increases of power. The court also found that while the embodiments of the patent involve continuous increases of power, there is no indication that the patentee intended to limit the claimed invention to disclosed embodiments. Finally, the ITC pointed to conception documents showing sketches of the two types of transmissions, continuous and stepwise, as evidence that the inventors only intended to cover continuous transmissions by only disclosing those embodiments in the patents. The court rejected the argument, finding that “the inventors’ failure to include a reference to the alternative embodiment in the specification does not justify excluding that embodiment from the coverage of the claims.”

A copy of the opinion can be found here.