District court, in concluding that “circuit” limitations in claims for computerized switching systems are means-plus-function limitations, erred by relying on single word “circuit” rather than examining limitations as whole, since every use of term in asserted claims includes additional adjectival qualification that further identifies sufficient structure. A claim term that does not use “means” will trigger the rebuttable presumption that § 112, paragraph 6 does not apply. The presumption can collapse when a limitation lacking the term “means” nonetheless relies on functional terms rather than structure or material to describe performance of the claimed function. To help determine whether a claim term recites sufficient structure, the court must examine whether the claim term has an understood meaning in the art. Thus, the threshold issue for all the limitations involved in the “circuit” is whether the term itself connotes sufficient structure to one of ordinary skill in the art to perform the functions identified by each limitation. While the court did not find it necessary to hold that the “circuit” by itself always connotes sufficient structure, the term “circuit” with an appropriate identifier such as “interface,” “programming,” and “logic,” certainly identifies some structural meaning to one of ordinary skill in the art. The term “circuit” is defined as “the combination of a number of electrical devices and conductors that, when interconnected to form a conducting path, fulfill some desired function.” In light of this definition, it is clear that the term “circuit” by itself connotes some structure. (Apex Inc. v. Raritan Computer Inc., 66 USPQ2d 1444, CA FC, 4/2/03).
Inequitable Conduct
Inventors made misrepresentations in example in specification for claimed thermostable enzyme by writing example in past tense, since reader of patent would conclude that purification protocol described in example was actually performed, and that stated results were actually achieved, whereas evidence shows that example was never performed as described. (Hoffmann-La Roche Inc. v. Promega Corp., 66 USPQ2d 1385, CA FC, 3/31/03).
Defining Claim Term
Term “co-micronization,” as used in composition and method claims for fenofibrate, does not take its ordinary and accustomed meaning, and is properly construed to require micronization of fenofibrate and solid surfactant in absence of other excipients, since term is specifically defined in that manner in patent, and patentee’s definition from specification, thus is properly read into claims. Courts must presume that the terms in the claim mean what they say, and unless otherwise compelled, give full effect to the ordinary and accustomed claim terms. However, in this instance, the patentee has “chosen to be his own lexicographer and has explicitly defined in the patent specification.” (Abbott Laboratories v. Novopharm Ltd., 66 USPQ2d 1200, CA FC, 3/20/03).
Means-Plus-Function Claim
Limitation in claim for image processing apparatus that recites “a destroying member for destroying said thermally processed film after said film has been scanned” is means-plus-function limitation, since term “a destroying member” is provided within functional context to describe functional feature of destroying thermally processed film after it has been scanned, and as such is permissible under narrow rule of construction of 35 U.S.C. §112, sixth paragraph. (Sanada v. Reynolds, 67 USPQ2d 1459, Bd Pat App & Int (unpub), 3/19/03).
Offer for sale
“Commercial offer for sale” under 35 U.S.C. § 102(b) requires communication that offeree could make into binding contract by simple acceptance; special master, proceeding under assumption that “contract law principles do not govern § 102(b) principles” erred in applying standard requiring something less than formal offer. (Lacks Indus. Inc. v. McKechnie Vehicle Components USA Inc., 66 USPQ2d 1086, CA FC, 3/13/03).
Declaratory Judgment
Threats of infringement against entire product industry can create reasonable apprehension among all individual members of that industry, and defendant’s comments in newspaper articles, directed to omeprazole drug industry as whole, were sufficient to put generic omeprazole manufacturers in reasonable apprehension of patent infringement suit by defendant. (Dr. Reddy’s Laboratories Ltd. v. aaaiPharma Inc., 66 USPQ2d 1878, DC SNY, 9/13/02).
IP Currents 