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Fresh From the Bench: Recent Patent Cases From the Federal Circuit

June 23, 2014

Overview

Gemalto – A unanimous panel affirms a claim construction and motion for summary judgment of noninfringement that the Android operating system does not infringe three Gemalto patents.

Dinsmore - The Circuit affirms a Board decision that applicants' filing of an terminal disclaimer is not an ‎error that can be remedied by a reissue application even though applicants mistakenly thought their application and a cited patent were commonly owned at the time of the disclaimer.‎

Allergan - A divided panel reverses a determination of invalidity as to obviousness of the ‎two patents in suit directly to an eyelash growth stimulant after deciding that there was insufficient corroboration to prove that the claimed invention was ‎conceived before an article that rendered the claimed invention obvious. ‎

Gemalto S.A. v. HTC Corporation et al., Fed. Cir. Case 2013-1397 (June 19, 2014)

The Circuit affirms claim construction and defendants' motion for summary judgment of noninfringement that the Android operating system does not infringe three Gemalto patents. Included as defendants are HTC, Google, Samsung, Motorola Mobility and Exedea. The summary judgment means that Java cards that are installed in smartphones using Google's Android operating system dd not infringe the Gemalto patents.

The technology covered by the patents-in-suit is designed to allow microcontrollers to run software applications written in high level programming languages such as Java. Before Gemalto's invention, microprocessor-based personal computers could run Java applications, but these computers used processors that required substantial amounts of memory, which was located on chips separate from the chip containing the processor (referred to as off-chip memory). Microcontroller-based devices, such as integrated circuit cards (or smart cards), had substantially less memory. Due to the disparity between the constraints of the devices and the demands of the applications, fitting Java technology inside smart cards was like "playing golf in a telephone booth," according to Sun Microsystems' Scott McNealy.

The claims at issue recite either an "integrated circuit card" or a "programmable device" that includes a processor and a "memory" storing a converted application and an interpreter. Both the integrated circuit card and programmable device claims require the recited "memory" to store a converted application and an interpreter. The asserted programmable device claim expressly requires the application to be converted "into a minimized form suitable for interpretation within the set of resource constraints by the interpreter."

The district court construed the recited "memory" as "all program memory" — i.e., "sufficient memory to run the Java code [or other high level programming language] in accordance with the patentee's invention." In other words, the court's construction required all application memory to be stored on the same chip as the processor. The court construed "resource constraints" to mean "insufficient memory to run the compiled application source program in an unconverted form," and construed "integrated circuit card" to mean "a card containing a single semiconductor substrate [i.e., a chip] having a central processing unit and all program memory." The court construed "programmable device" as "a single semiconductor substrate integrating electronic circuit components that includes a central processing unit and all program memory making it suitable for

I. Claim Construction

A. "Integrated Circuit Card" Claims

Gemalto challenges the district court's construction of the "memory" limitation as being overly narrow. According to the panel, the claim language does not support Gemalto's theory, but instead requires a "memory" that stores an "application" and a "processor" that is coupled to the memory. The specification demonstrates that the entire purpose of the invention was to enable the application to be stored within the memory on the chip of the integrated circuit card. Integrated circuit cards, such as smart cards, are small, portable devices. Before Gemalto's invention, applications for integrated circuit cards were typically written in low level programming languages to conserve memory. With the expansion of digital networking, there was a "need to load new applications on the card. However, typically, this was not practical using low level languages. The specification demonstrates that external memory storage was a defining feature of prior art Java technology, and that the patented invention was designed to eliminate the need for such external storage. According to the panel, the claims cannot be of broader scope than the invention that is set forth in the specification. Gemalto's interpretation of the term "memory" also conflicts with the prosecution history. During initial prosecution and reexamination of the '317 patent, Gemalto repeatedly distinguished prior art by emphasizing the novelty of squeezing a Java application onto the memory of an integrated circuit card.

B. "Programmable Device" Claims

Gemalto also argues that any limitations barring the use of off-chip memory in an integrated circuit card are not relevant to claim 3 of the '727 patent, which is directed to a "programmable device." Gemalto asserts that the term should be construed broadly to mean "a device that can execute a computer program." However, according to the panel, the testimony of two of the asserted patents' inventors confirms that the term had no such meaning. Here, the meaning of "memory" is made even clearer by the language of the programmable device claim that requires the application loaded in the memory to be converted "into a minimized form suitable for interpretation within the set of resource constraints by the interpreter." Moreover, Gemalto's arguments during prosecution of the '317 patent directly make clear the meaning of "resource constraints." To obtain the '317 patent, Gemalto emphasized that the conversion of the application was necessary because of the resource constraints on the device on which it was stored.

The panel also felt that the prosecution history of the '727 patent and those from which it derives priority does not support Gemalto's theory that a "programmable device" can be any type of computer. Rather, the prosecution history demonstrates that a programmable device must have resource constraints that the patentee argued made squeezing Java applications on them "anything but obvious." To be consistent with the "resource constraints" limitation, the device must have insufficient memory to run the application in an unconverted form. Allowing the device to access external off-chip memory would effectively read this express limitation out of the claim. For all of the foregoing reasons, the panel affirms the claim constructions of the district court.

II. Infringement

The district court granted summary judgment of non-infringement, finding that the accused devices do not infringe literally because it was undisputed that they "store program instructions off-chip and access those off-chip instructions to run the accused applications." Gemalto argues that the accused devices infringe the asserted claims, as construed by the district court, under the doctrine of equivalents when they temporarily load program instructions from off-chip memory into on-chip cache memory before execution. Gemalto admits that cache memory does not store program instructions when the accused devices are turned off, but argues that the difference between temporary on-chip storage and permanent on-chip storage is insubstantial or, alternatively, that the significance of this difference raises a genuine question of material fact. Gemalto's theory of infringement by equivalents hinges on its contention that on-chip cache memory is equivalent to on-chip memory permanently storing applications. According to Gemalto, applications are loaded into on-chip cache memory before execution 97% of the time, and the difference between 97% and 100% is insubstantial.

The panel stresses that a plaintiff must provide "particularized testimony and linking argument to show the equivalents" are insubstantially different. According to the panel, Gemalto failed to provide particularized testimony and linking argument. Specifically, Gemalto provided no testimony asserting that the difference in functionality between cache memory and permanent memory is in fact insubstantial. Absent any testimony suggesting that cache memory is equivalent to permanent memory, no reasonable fact finder could find that the two types of memory function in substantially the same way to achieve substantially similar results.

Moreover, if cache memory were equivalent to the recited memory that stores an application and interpreter, Gemalto's claims would read on microprocessor systems that were widely used prior to its invention. According to the panel, the doctrine of equivalents cannot be applied to encompass the prior art. Therefore, the panel agreed with the district court that the accused devices do not infringe under the doctrine of equivalents due to their use of cache memory.

In re Dinsmore and Caruso, Fed. Cir. Case 2013-1637 (June 10, 2014)

A terminal disclaimer had been filed in response to rejections for obviousness-type double patenting. The disclaimer declares that the ‘568 patent "shall be enforceable only for ‎and during such period" as it is commonly owned with the patent that underlay the ‎double-patenting rejection. In their reissue application, applicants sought to ‎remove the terminal disclaimer and thereby delete the reference to common-ownership because they now realize that the two ‎patents are not and never have been commonly owned. The panel determined this is not the kind of "error" that is subject to correction by reissuance.

The original patent application identified Dinsmore and Caruso as inventors and twX,LLC as the assignee. During prosecution the examiner rejected several of the claims on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims of an earlier ‘086 patent listing Dinsmore as the inventor and Carl Zeiss as the assignee. The applicants responded by filing a terminal disclaimer over the '086 patent, disclaiming any term of the '568 patent beyond the expiration date of the '086 patent. Using the appropriate PTO form, the applicants' terminal disclaimer declares that "any patent so granted on the instant application shall be enforceable only for and during such period that it and the prior patent are commonly owned." ‎

Following issuance, applicants applied to reissue the '568 patent, seeking simply to remove the terminal disclaimer, the stated "error" being that applicants inadvertently and without deceptive intent filed a terminal disclaimer over the '086 patent, which was not commonly owned by the owners of the '568 patent. The examiner denied the reissue application, ruling that this was not correctable by reissuance, and the Board affirmed.

Applicants argue that because the two patents are not and never have been commonly owned, the terminal disclaimer was an "error" within the meaning of the reissue statute. Section 251, at the relevant time, read in pertinent part:

Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent….

The terminal disclaimer promises that the '568 patent "shall be enforceable only for and during such period that it and the prior patent [i.e., the '086 patent] are commonly owned." That promise, which is clear on its face, can readily be given effect: the patent will not be enforced except when owned by the owner of the '086 patent. And the applicants, by filing the disclaimer, achieved the immediate effect of overcoming the obviousness-type double-patenting rejection.

According to the panel, the applicants can only be arguing that the disclaimer was "ineffective" in the sense that it did not produce a patent they could actually enforce by themselves, without common ownership. This argument is an insufficient basis for reissue, even if the condition of present inability to enforce constitutes inoperativeness within the meaning of section 251. The panel characterizes this as ultimately no more than a now-regretted choice, because the applicants identify no cognizable false or deficient understanding of fact or law that underlay the choice. This is not "error" as required by section 251, and the panel therefore affirms the Board decision.

Allergan, Inc. and Duke University v. Apotex Inc., Fed. Cir. Case 2013-1245-47 (June 10, 2014)

In a long opinion dealing with many issues, a divided panel reverses a determination of invalidity as to obviousness of the two patents in suit after deciding there is insufficient corroboration to prove that the claimed invention was conceived before the date of publication of an article that renders the invention obvious.

In the course of research on medications to treat glaucoma patients with latanoprost eyedrops, it was discovered that a substantial fraction ‎of the patients grew much longer and denser eyelash hair. This resulted in two patents that were subsequently assigned to Allergan and Duke. After a bench trial following ANDA submissions, the district court determined that the asserted claims were not invalid for anticipation, obviousness, insufficient written description, or lack of enablement, and that appellants infringed. The court enjoined appellants from commercial manufacture, use, offer to sell and/or sale of the proposed products.

After quickly disposing of the appellants' claim construction argument that "arresting hair loss, reversing ‎hair loss, or both and promoting hair growth" must mean that the claimed invention must accomplish all three goals, the panel turned to appellants' invalidity arguments.

1. Anticipation of the ‘029 patent

With respect to the '029 patent, appellants raise two ‎allegedly anticipatory references: (i) the published patent ‎application arising from Dr. Johnstone's ‎research on promoting hair growth using latanoprost and ‎related compounds, and (ii) Allergan's earlier ‘819 patent on ‎the use of bimatoprost and related compounds to treat ‎glaucoma. ‎

As to the Johnson application, the majority felt that, in light of the very limited dis‎closure in the published application, the court did not commit clear error, and affirmed this portion of the ruling. The ‘819 patent discloses the use of a set of selective analogs, including bimatoprost, which, according to appellants, is within the scope of the ‘029 patent claims. The district court found that appellees' expert witness had persuasively testified that a "properly applied drop" would not transfer to the skin, and therefore because a bimatoprost eyedrop only may contact skin, the ‘819 patent does not anticipate. The panel concluded that it could not say that the district court committed clear error in finding that ‎the '819 patent does not inherently anticipate the claims ‎of the '029 patent.

2. Obviousness of ‘029

The district court held that the '029 patent was non-obvious, based principally on its finding that there was no motivation to combine Johnstone and the '819 patent due to "pharmacological differences" between the compounds that each reference discloses. The district court reached its conclusion of nonobviousness by looking only at properties of the C1-amide group and, particularly, bimatoprost. According to the majority, the court erred by failing to take into account the full scope of the '029 claims. The scope of the independent claims of the '029 patent encompasses thousands of permutations of PGF analogs, including structures with all kinds of functional groups at the C1 location. Given the breadth of the '029 patent's claims, appellants did not have the exacting burden of showing a reasonable expectation of success in using the narrow class of analogs with C1-amide groups to treat hair loss, let alone a reasonable expectation of success in using bimatoprost in particular. The district court's findings on secondary considerations suffer from the same infirmity of lacking a nexus with the scope of the '029 patent's claims.

The majority concluded that failure to consider the appropriate scope of the '029 patent's claimed invention in evaluating the reasonable expectation of success and secondary considerations constitutes a legal error that is reviewed without deference.

3. The Brandt References and the ‘404 patent

The '404 patent emerged from Allergan's clinical trials evaluating the safety and efficacy of bimatoprost eyedrops for glaucoma treatment. Appellants identify four publications of clinical trials that they allege disclose the ability of bimatoprost to promote eyelash hair growth (collectively the "Brandt references"). The district court found that the ‘404 patent was invented prior to the publication of the closest references, dated May and June of 2001, and therefore the references were not prior art under § 102(a).

a. Date of Invention

The invention date is the date of conception, and conception is "the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." The issue of the conception date is a legal conclusion based on underlying factual findings. While defendants bear the burden of persuasion to show that the Brandt references are prior art to the '404 patent by clear and convincing evidence, the patentee nevertheless must meet its burden of production to demonstrate an earlier conception date.

The district court found that the conception date of the '404 patent was in mid-2000 based on: (i) Dr. Woodward's credible testimony that he reached a "concrete conclusion" that topical application of bimatoprost would grow hair in mid-2000, (ii) Dr. Van- Denburgh's credible testimony of meeting with patent attorneys between late 2000 and early 2001 to discuss the invention, and (iii) internal Allergan memoranda reporting eyelash growth in clinical trials, which were received by Drs. Woodward and VanDenburgh in early 2000. The problem is that to the extent there is any documentary evidence, it does not relate to the claimed invention of the '404 patent—the topical application of bimatoprost for use to promote eyelash hair growth. The Allergan memoranda refer only to eyelash growth resulting from the administration of eyedrops. The memoranda reported the side effects of bimatoprost used in eyedrops and did not disclose the claimed invention of topical application for intended therapeutic effect. The only evidence that corroborates Dr. Woodward's testimony that he conceived of topical application of bimatoprost in mid-2000 is the oral testimony of his co-inventor, Dr. VanDenburgh, which the panel noted it must treat with skepticism due to the possibility of an inventor's self- interest in obtaining or maintaining an existing patent.

According to the panel, the district court therefore committed clear error in finding corroboration of an earlier priority date in documents that collectively do not include any description of the claimed invention of the '404 patent. As the only other potentially corroborating evidence of conception is the oral testimony of a co-inventor, the panel reverses the district court's finding that the '404 patent was conceived prior to the date of publication of the May and June 2001 Brandt references.

b. Authorship of the Brandt References

Appellees argue that even if the '404 patent cannot claim an earlier priority date, the later Brandt references are still not § 102(a) art as they represent the work of the inventors themselves. First and foremost, the question is not whether, as appellees seem to argue, Dr. VanDenburgh or Dr. Brandt was the first to recognize bimatoprost's potential therapeutic value for eyelash hair growth. The relevant inquiry must be whether the Brandt references were solely Dr. VanDenburgh's work and hers alone. The panel reviewed the evidence and concluded that appellees have produced no evidence—and provided no supported explanation demon- strating that the Brandt references were in fact printed publications authored by Dr. VanDenburgh, and the panel saw no reason to remand to make further findings on this issue. The question of whether a reference is a work of others for the purposes of § 102(a) is, like that of inventorship, a question of law based on underlying facts. Accordingly, the panel holds that the Brandt references are prior art to the '404 patent.

2. Invalidity

The Johnstone prior art details how eyedrops containing latanoprost (marketed as the glaucoma drug Xalatan®) promote the eyelash hair growth through the mechanism of fluid containing latanoprost making topical contact with the eyelid. Johnstone also discloses the topical application of latanoprost to treat hair loss. In light of the Brandt reference's disclosure of bimatoprost's effect in growing eyelash hair, a person of ordinary skill would have had substantial motivation to follow Johnstone and use topical application of bimatoprost to grow eyelash hair. Likewise, the Brandt references provided a reasonable expectation of success for the topical application of bimatoprost.

Given the overwhelming weight of evidence, the majority felt that remand is unnecessary "as here, the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors." Accordingly, the majority reverses the district court's finding that the '404 patent is not invalid for reasons of obviousness.

Judge Chen dissents as to the reversal of the district court's conclusion that appel‎lants failed to meet their burden of proving that the prior ‎art rendered the '029 patent obvious by Johnstone, either ‎alone or in combination with the '819 patent. In his view, ‎Johnstone's teachings are simply too vague and equivocal ‎to justify invalidating the patent. ‎

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