Federal Circuit Interprets “a” or “an” As Not Being Limited To Only One

In Baldwin Graphics v. Siebert, 85 USPQ2d 1503 (Fed. Cir. 2008), the Federal Circuit affirmed-in-part, reversed-in-part, and remanded a District Court decision of granting summary judgment of non-infringement of U.S. Patent No. Re. 35,976 (the Reissue patent) and U.S. Patent No. 5,974,976 (the ’976 patent) based on the District Court’s misinterpretation of claim language. The claimed invention of the Reissue patent and the ’976 patent is for cleaning a cylinder of a printing press using strips of cleaning fabric and methods for making those systems. Baldwin sued Siebert, asserting that Siebert’s packaged fabric rolls infringed claim 32 of the Reissue patent and claims 1, 7, 9, 12, 14, 23, and 25 of the ’976 patent.  The District Court construed “a pre-soaked fabric roll” to mean “a single pre-soaked fabric roll.” In concluding that “a” means “one” in this context, the District Court largely relied on the subsequent use of “said fabric roll” as suggesting a singular fabric roll.  Also, according

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Federal Circuit Find Inequitable Conduct For Failure to Submit Notes

In Monsanto Company v. Bayer Bioscience N.V., 85 USPQ2d 1582 (Fed. Cir. 2008), Bayer owns four patents related to Bacillus thuringiensis (BT) toxins, which are proteins produced by strains of the BT bacteria.  BT toxins are harmless to humans and most animals, but are toxic to certain crop-destroying insects.  In 1986, Plant Genetic Systems (a predecessor to Bayer) succeeded in obtaining insect-resistant plants that expressed a truncated form of a BT toxin, resulting in the four Bayer patents.  Specifically, U.S. Patent No. 5,545,565 (one of the four Bayer patents) claims artificial genes comprising: a truncated BT toxin gene encoding a BT toxin of a specific amino acid sequence; and the regulatory region of a gene naturally expressed in plant cells, which enables the gene to be transcribed in plants. Monsanto, the alleged infringer, developed a genetically modified corn product that expressed a BT toxin with the same amino acid sequence claimed in the Bayer patents.  Accordingly, in December 2000, Monsanto

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Federal Circuit Clarifies Status of Paper Available on FTP Site For Purposes of 35 U.S.C. §102

Federal Circuit Finds Mere Uploading Of a Paper to an FTP Site Does Not Make the Paper Publicly Available In SRI International, Inc., v. Internet Security Systems, Inc., 511 F3d 1186, 85 USPQ2d 1489 (Fed. Cir. 2008) the Federal Circuit affirmed in part, and vacated and remanded in part the District Court’s decision finding Internet Security Systems (ISS) was liable for infringement of U.S. Patent Nos. 6,484,203 (“the ‘203 patent”), 6,708,212 (“the ‘212 patent”), 6,321,338 (“the ‘338 patent”), and 6,711,615 (“the ‘615 patent”) (collectively the SRI patents). The SRI patents relate to cyber security and intrusion detection. Specifically, the SRI patents describe “[a] computer-automated method of hierarchical event monitoring and analysis within an enterprise network including deploying network monitors in the enterprise network, detecting, by the network monitors, suspicious network activity based on analysis of network traffic data.” All four patents originated from a November 9, 1998 application by inventors Phillip Porras and Alfonso Valdes. The EMERALD 1997 paper In

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Feature Comment: Status of New Rules Affecting Continuation Practice, Claims Practice, and Information Disclosure Statement Practice

By James G. McEwen[1] Background Under prior rules, an applicant was entitled to file as many continuation applications as needed to ensure that the invention was properly claimed and to prevent inadvertently narrow limitations from precluding literal infringement.  The only limitation on the number of continuations was generally set by matters of equity or where an applicant was not attempting to advance prosecution by amending the claims.  The applicant could also attempt to ensure such coverage using a single application which included as many claims as needed.  The limitation on the number of claims in a single application was set by the Examiner, who could issue a restriction if the number of claims being examined was deemed too burdensome for a single application. 

Federal Circuit Finds Priority Documents Are Not New Evidence For Purposes of Interference

In In re Harold Garner, Civ Case. No. 2007-1221 (Fed. Cir. December 5, 2007), Calvin F. Quate and David Stern (collectively Quate) are the inventors of U.S. Patent No. 6,480,324, and Harold R. Garner is the inventor of U.S. Application Serial No. 09/998,341.  Quate is the senior party in an interference proceeding between U.S. Patent No. 6,480,324 and U.S. Application Serial No. 09/998,341, and Garner is the junior party based on the effective filing date.  Garner’s patent application was initially rejected based on the filing date of Quate.  Garner attempted to establish a prior reduction to practice for his invention in his 2001 declaration that included:  photos of the device he built before the filing date of that prior art reference and a lab notebook that allegedly showed that the device worked.  John Fondon’s declaration executed on Oct. 20, 2005 was also submitted in a later filing. The evidence was submitted under Rule 131.

Federal Circuit Finds Prosecution History Does Not Limit Claim Scope Where One Skilled In The Art Would Recognize Statement Is In Error

In Elbex Video, Ltd., v. Sensormatic Electronics Corporation, 2007-1097 (Fed. Cir. November 28, 2007), Elbex owns US Patent No. 4,989,085 (the ‘085 patent).  The ‘085 patent is drawn to a closed circuit television system including a supervisory station from which television cameras are controllable.  The supervisory station includes a video monitor to receive and display signals from the cameras, a device to control the cameras, and a switching device to select one of the cameras to be controlled.  To prevent manipulation of the wrong camera from the supervisory station, the ‘085 patent employs an addressing scheme in which each camera generates a unique first code signal.  The first code signal is sent from the camera with video data to a receiving device of the supervisory station.  A receiving device receives the first code signal, which is then input to a controlling means that generates a second code signal corresponding to the received first code signal and transmits that second code

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Federal Circuit Finds Improper Incorporation By Reference Prevented Claiming Priority To Parent Appplication

In Zenon Environmental, Inc. v. United States Filter Corporation, Civ Case No. 2006-1266, -1267 (Fed. Cir. November 7, 2007), Zenon is the owner of U.S. Patent No. 6,620,319 (hereinafter referred to as the ‘319 patent).  The ‘319 patent relates to water treatment and filtration systems, and in particular, to the use of vertical skeins having fibers that filter organic material and which are cleaned using air bubbles of a predetermined size which are provided by a gas distribution system.  The ‘319 patent was designated as a continuation of multiple applications in a chain, including U.S. Patent No. 5,910,250 (hereinafter referred to as the ‘250 patent).  The ‘250 patent was designated as a continuation in part of U.S. Patent No. 5,639,373 (hereinafter referred to as the ‘373 patent).  The ‘373 patent described vertical skeins and a gas distribution system, and the ‘319 patent claims the same gas distribution system described in the ‘373 patent. The ‘250 patent incorporated the subject matter

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Federal Circuit Finds Reservation of Exclusive Right to Enforce Field of Use In Particular Area Does Not Confer Right to Sue Without Patent Owner

In Int’l Gamco, Inc. v. Multimedia Games, Inc., 504 F3d 1273; 84 USPQ2d 2017 (Fed. Cir. 2007), International Gamco, Inc. (“Gamco”) was the owner of U.S. Patent No. 5,324,035 (the ‘035 patent) which relates to a gaming system network.   Gamco assigned the ‘035 patent to International Game Technology (“IGT”), but reserved sublicensing and enforcement rights in the New York State Lottery Market.   In a first attempt to enforce this provision, Gamco sued Multimedia, who runs the New York State Lottery forNew York, for infringement of the ‘035 patent.  The District Court for the Northern District of California dismissed the suit for lack of subject matter jurisdiction since Gamco’s reservation was not an exclusive license permitting Gamco to sue without the patent owner, IGT.  In response, Gamco and IGT executed a second license in which IGT affirmatively assigned Gamco “the exclusive right and license, within the Territory, to make, use, sell, and offer to sell, with the right to sublicense others

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Federal Circuit Rejects Patent Office’s Interpretation of Flexible To Include Rigid to be Unreasonable and Not Creditable

In In re Buszard, 84 USPQ2d 1749 (Fed. Cir. 2007), applicants’ invention is directed to a flexible polyurethane foam used in a flame retardant composition.  The Examiner rejected the claims as anticipated in view of Eling et al., which describes a rigid foam that is made flexible through crushing.  The Board of Patent Appeals and Interference (BPAI) affirmed the Examiner, and the applicants appealed the BPAI decision on the grounds that the Examiner’s interpretation of the term “flexible” cannot encompass “rigid.”  In reviewing the BPAI decision, the Federal Circuit held that, under the Administrative Procedure Act, 5 U.S.C. ‘706, all decisions from the BPAI are reviewed to determine if the Board’s decision is supported by substantial evidence. Dickinson v. Zurko, 527U.S. 150, 165 (1999).  Moreover, for purposes of anticipation, the record must show that all limitations in the claim are met by a single reference where the claims are given their broadest reasonable interpretation. In reviewing the record and the

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