Fresh From the Bench: Precedential Patent Cases From the Federal Circuit
The big news this week (and it is particularly big news in Tyler and Marshall, Texas) is that the Supreme Court rules that a defendant “resides” for purposes of the patent venue statute only where the defendant actually is incorporated or where the defendant has committed acts of infringement and has a regular and established place of business. That is, the general venue statute, which permits corporations to be sued wherever personal jurisdiction is present, does not apply to patent cases. See our report on the case here.
In Rivera, the panel affirms a determination by the ITC that the claims of a patent directed to single brew coffee machines are invalid due to lack of compliance with the written description requirement. In yet another Halo v. Pulse decision, the Circuit rules that it does not have jurisdiction to hear an appeal because an order that had not decided remaining issues as to prejudgment interest was not a final decision.
Thanks to my colleague Gillian Bunker, one of our biotech Ph.D. prosecutors, for her help with this week’s report.
Rivera v. ITC, Fed. Cir. Case 2016-1841 (May 23, 2017)
The ’320 patent describes as falling into two general categories: those that use “pods” (small filter packages), and those that use larger, cup-shaped filter cartridges. The patent purports to solve the problem of the incompatibility between pod-based and cartridge-based systems. The original claims were directed to a “pod adaptor assembly” or a “brewing chamber for a beverage pod.” However, these claims were cancelled during prosecution in favor of broader claims reciting “a container … adapted to hold brewing material.” Rivera filed a complaint with the ITC over refillable cartridges that included an integrated mesh filter. The panel identifies the basic issue in this case as whether the patent as filed supports Rivera’s claims to a “container … adapted to hold brewing material.”
Rivera argued unsuccessfully that the broad definition of “pod” in the specification provided written description support for both the species shown in the specification (with a “pod” being distinct from the cartridge), and the species represented by the accused products (with a filter integral to the cartridge). However, the panel notes that the distinction between pods and cartridges permeates the entire patent, and points out that Rivera’s argument is directed to the question of enablement, and not written description. The panel clarifies “whatever a ‘pod’ is, the specification indicates that it is distinct from the receptacle; … nothing in the specification shows that the ‘pod’ and the receptacle may be the same structure.” The panel also points out that “the knowledge of ordinary artisans may be used to inform what is actually in the specification...but not to teach limitations that are not in the specification, even if those limitations would be rendered obvious by the disclosure in the specification.”
Comments: When written description rejections arise during prosecution, they can often be addressed with claim amendments. However, once prosecution has concluded, a written description issue can result in a finding of invalidity. Thus, whenever claims are broadened during prosecution (especially when they are amended to cover a new embodiment or potentially infringing product), an applicant must take care to review the specification carefully for adequate support for the newly-added scope.
Halo Electronics, Inc. v. Pulse Electronics, Inc., Fed. Cir. Case 2016-2006 (May 26, 2017)
The Circuit rules that it does not have jurisdiction to hear an appeal under either 28 U.S.C. § 1295(a)(1) or 1292(c)(2) because a prior order that had not decided remaining issues as to prejudgment interest was not a “final decision.”
An April 6, 2016 order required the parties to either file a stipulation as to the amount of interest due or, if they disagreed on the calculation of interest, to brief their respective positions. The issue before the panel is whether that order was a final order. Clearly, the district court never resolved the parties’ dispute regarding the date from which to begin calculating prejudgment interest or set the amount of prejudgment interest to be awarded to Halo. As a result, the panel holds that there is no final decision and the Circuit thus lacks jurisdiction under § 1295(a)(1).
For similar reasons, the panel determines that it lacks jurisdiction pursuant to § 1292(c)(2). This statute provides an exception to the finality requirement over “an appeal from a judgment in a civil action for patent infringement which would otherwise be appealable to this court and is final except for an accounting.” However, the panel notes that, as an exception, § 1292(c)(2) is to be interpreted narrowly. Regardless whether prejudgment interest is part of an accounting or not, the award of prejudgment interest itself in this case is not final. The Circuit has held that § 1292(c)(2) “does not go so far as to permit us to consider a non-final order” that is related to the accounting. Thus, because the order appealed from is itself non-final, the Circuit lacks jurisdiction under § 1292(c)(2).