JOLT Digest

Federal Circuit Affirms $371 Million Judgment Against W.L. Gore
By Michael Hoven – Edited by Matt Gelfand

Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., No. 2010-1050 (Fed. Cir. Feb. 10, 2012)
Slip opinion

The Court of Appeals for the Federal Circuit affirmed a decision from the District of Arizona, which upheld a jury verdict that W.L. Gore & Associates’s employee had not jointly invented a vascular graft patented by Bard Peripheral Vascular, and that Gore had willfully infringed Bard’s patent. In addition, the Federal Circuit affirmed the lower court’s award of enhanced damages of $371 million, plus attorneys’ fees, costs, and an ongoing royalty to Bard.

The Federal Circuit held that there was substantial evidence to support the jury’s finding of willful infringement and that the district court had not abused its authority in awarding enhanced damages, fees, costs, and a royalty to Bard. Although Gore’s employee had supplied tubes of the substance ePTFE to the inventor behind the Bard patent so that ePTFE could be tested for suitability in vascular grafts, the court reasoned that the inventor of the Bard patent had the key insight into exactly how to fabricate ePTFE into successful vascular grafts, which was not anticipated by the work of Gore or other researchers investigating the use of ePTFE in such grafts. Further, the court rejected Gore’s argument that its employee was a joint inventor, pointing to evidence that the inventor of graft reduced the invention to practice without assistance from Gore. In so holding, the court stated that a researcher, if provided with a material to investigate a possible application, can claim an invention in his or her insight into the precise characteristics that make the material suitable for the application.

Bloomberg provides an overview of the case. The Patent Prospector says the patent at issue and its decades-long legal battle demonstrate that the patent system is broken. IP Biz noted the sharp exchange of words between the majority and the dissent. (more…)

Federal Circuit Holds That a Computer-Aided Clearinghouse is a Patent-Ineligible Abstract Idea
By Laura Fishwick – Edited by Adam Lewin

Dealertrack, Inc. v. Huber, Nos. 2009-1566, 2009-1588, 2012 WL 164439 (Fed. Cir. Jan. 20, 2012)
Slip Opinion

The Court of Appeals for the Federal Circuit affirmed the U.S. District Court for the Central District of California’s grant of summary judgment regarding the invalidity of Dealertrack’s U.S. Patent 7,181,427 (filed Sep. 3, 1997) (“the ’427 patent”), which had claims that covered an automated clearinghouse system for car dealerships. The district court had applied the then-definitive “machine-or-transformation” test from In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc) (“Bilski I”), requiring the claimed process either to be tied to a particular machine or apparatus or to transform an article into a different state or thing. Dealertrack had not argued that its claim effected a transformation, and the district court found that Dealertrack’s patent did not involve a particular machine as required by Bilski I’s test because the computer involved was a general purpose computer that was not “specially programmed.” For this reason, the district court held that the subject matter of Dealertrack’s patent was not eligible for protection under 35 U.S.C. § 101 of the Patent Act because Dealertrack had claimed an abstract idea.

Reviewing the patentable subject matter issue de novo, the Federal Circuit held that Dealertrack had claimed “an abstract idea preemptive of a fundamental concept or idea that would foreclose innovation in this area,” and therefore its patent was invalid. The court found that the claim’s language was too broad in scope, and that neither including a general computer to the method nor restricting the method to a particular field of use saved the patent’s validity.

PatentlyO provides an overview of the case and discusses the case in context of other recent Federal Circuit decisions.  (more…)

Federal Circuit Clarifies the Level of Contribution Required for Joint Invention of a Chemical Compound
By Yana Welinder – Edited by Adam Lewin

Falana v. Kent State Univ., No. 2011-1198, 2012 WL 171550 (Fed. Cir. Jan. 23, 2012)
Slip Opinion

The Federal Circuit affirmed in part the ruling of the U.S. District Court for the Northern District of Ohio, which held that Dr. Olusegun Falana should have been listed as co-inventor on a patent that described the use of his protocol for controlled synthesis of a category of chemical compounds for use in liquid crystal displays (“LCDs”).

Judge Linn, joined by Judge Prost and Judge Reyna, affirmed the district court’s order to add Falana as co-inventor to U.S. Patent No. 6,830,789 (filed Sept. 24, 2001) (“the ’789 patent”). The court found that Falana “envisioned the structure of a novel chemical compound and contributed to the method of making it” because he developed a procedure for synthesizing a new class of compounds that was later used to synthesize a compound that exhibited a desired temperature independence. Slip op. at 13. In so holding, the court considered Falana’s contribution to “the entire class of compounds covered by the plain language of the claims” and rejected the defendants’ narrow reading of the claims to be limited to compounds that can perform “across a temperature range of +10°C to +50°C.” Id. at 7, 9.

PatentlyO provides an overview of the case. IP Frontline criticizes the decision because as applied to patents “with countless claims [it] opens the door to the possibility that at least one of the claims was jointly invented by someone not named in the patent,” which might enable patent defendants to recruit unlisted co-inventors as part of a patent litigation defense strategy.  (more…)

Federal Circuit Holds that Typhoon’s Patents Are Valid, but Not Infringed
By Marsha Sukach – Edited by Andrew Crocker

Typhoon Touch Techs. v. Dell, Inc., No. 2009-1589 (Fed. Cir. Nov. 4, 2011)
Slip Opinion

The Federal Circuit affirmed in part and reversed in part the ruling of the U. S.District Court for the Eastern District of Texas, which held that Typhoon’s patents that cover its “keyboardless” touch-screen computing system are invalid and not infringed.

Federal Circuit Continues to Evade Addressing Intra-Circuit Split Regarding Claim Construction
By Katie Cohen – Edited by Albert Wang

Retractable Technologies, Inc. v. Becton, Dickinson and Co., No. 2010-1402 (Fed. Cir. Oct. 31, 2011)
Slip Opinion

The Federal Circuit denied a petition for rehearing en banc of Retractable Technologies, Inc.’s patent infringement suit against Becton, Dickinson and Company.

Notably, there were two dissents filed in the court’s decision. Judge Moore, joined by Chief Judge Rader, expressed frustration that, despite claim construction’s critical role in patent litigation, the Federal Circuit applies its rules in this area unpredictably. Judge Moore would have reheard this case to address the role of the specification in construing claims. In a separate dissent, Judge O’Malley urged that rehearing en banc should have been granted to revisit and reverse the court’s decision in Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), which held that claim construction is a matter of law reviewed without deference to a district court’s conclusions.

Patent Docs provides an overview of the case. IPWatchdog and PatentlyO outline the nature of the court’s split on claim construction issues.  (more…)