Latest Federal Court Cases, 4/22/19
PATENT CASE OF THE WEEK
E.I. Du Pont De Nemours & Co. v. Unifrax I LLC, Appeal No. 2017-2575 (Fed. Cir. Apr. 17, 2019)
Our featured case of the week revolved primarily on the construction of a single claim term in a patent. At issue is the meaning of the term “100% by weight.” A three judge panel spent 30 pages of a 40 page opinion focused on the construction of that single term, including a 12 page dissent. The case is important for its role in determining the extent to which the prosecution of patents in the same family can affect the construction of a claim term.
The patent at issue relates to thermal and acoustic insulation blankets used in airplanes, which shield passengers from noise flames and reduce noise. The laminate layers of the blanket include “an inorganic refractory layer” “wherein the inorganic refractory layer of … comprises platelets in an amount of 100% by weight with a dry areal weight of 15 to 50 gsm and a residual moisture content of no greater than 10 percent by weight.”
Du Pont argued that “100% by weight” means “[t]here is no carrier material such as resin, adhesive, cloth or paper in addition to the inorganic platelets. There may be some residual dispersant arising from incomplete drying of the platelet dispersion.” Unifrax argued that the term carries its plain an ordinary meaning such that the refractory layer must be 100% platelets.
The district court agreed with Du Pont. The Federal Circuit affirmed. Starting with the language of the claims itself, the Court held that the following phrase “and a residual moisture content of no greater than 10 percent by weight” implied that “100% by weight” of platelets did not mean 100% of the layer was platelets. Rather, at least 10% could be residual moisture content.
Second, the Court looked to the specification, which states that “[t]he refractory layer comprises platelets. Preferably at least 85% of the layer comprises platelets, more preferably at least 90% and most preferably at least 95%. In some embodiments, platelets comprise 100% of the layer. The refractory layer may comprise some residual dispersant.” The Court found this to suggest that some dispersant may be in the refractory layer along with the platelets and the residual moisture.
Finally, the Court looked to the prosecution history of a parent patent from which the patent at issue was a continuation in part. That patent further supported reading “100% by weight” so as to include residual moisture and dispersant. Unifrax challenged that the prosecution history of the parent patent was not intrinsic record. But after tracing numerous cases addressing how the prosecution history of family members is to be treated in claim construction, the Court agreed with Du Pont and the district court and relied on statements from the parent prosecution.
Judge O’Malley dissented. She would have held that the Court’s construction of “100% by weight” “ignores the plain meaning of ‘100%’ and introduces more ambiguity than it resolves.”
In one other notable portion of the opinion, the Court addressed whether evidence was sufficient to corroborate a prior conception date, applying the “rule of reason” standard. Although the corroborating evidence did not link to every claim limitation, the Court held that, when combined with the testimony of the inventors, it was sufficient under the “rule of reason” standard to corroborate a date of conception as of a particular date.
The opinion can be found here.
ALSO THIS WEEK
VersaTop Support Systems, LLC v. Georgia Expo, Inc., Appeal No. 2018-1208 (Fed. Cir. Apr. 19, 2019)
In this appeal from the U.S. District Court for the District of Oregon, the Federal Circuit reversed and remanded the district court’s decision on summary judgment that Georgia Expo did not infringe VersaTop’s trademark rights. Specifically, the district court held that Georgia Expo had not “affixed” the VersaTop trademarks to goods that were “sold or transported in commerce,” and therefore, the Lanham Act’s provision regarding likelihood of confusion was not applicable. The Federal Circuit reversed based on Georgia Expo’s admissions that it distributed an advertising brochure that included a picture of VersaTop’s product and a reference to VersaTop’s trademarked product names. In analyzing the distinction between “use in commerce,” as required for federal trademark registration, and “use of any type,” as required for a finding of infringement of a trademark, the Court held that the district court incorrectly applied the definition of “use in commerce” to its analysis of whether Georgia Expo’s use of VersaTop’s trademarks was infringing. Because infringement of a trademark can be any use of the trademark, which Georgia Expo readily admitted, the Federal Circuit held that the district court erred in not analyzing whether Georgia Expo’s use of the marks would cause a likelihood of confusion.
The opinion can be found here.
Trading Technologies International, Inc. v. IBG LLC, Appeal No. 2017-2257 (Fed. Cir. Apr. 18, 2019)
In an appeal from the Patent Trial & Appeal Board (PTAB), the Federal Circuit affirmed final written decisions holding that three patents owned by Trading Technologies Int’l., Inc. (TT) were (i) eligible for Covered Business Method Patent (CBM) review, and (ii) that the patents failed both steps of the two-step Alice analysis for patent eligibility under 35 U.S.C. § 101. As to CBM eligibility, the Federal Circuit agreed with PTAB that the patents did not solve a technical problem with a technical solution, but instead only concerned a graphical user interface (GUI) that provided certain conveniences to users of an electronic trading system. With respect to the Alice analysis, the Federal Circuit agreed, for many of the same reasons, that the challenged claims were patent ineligible under 35 U.S.C. § 101. Under Alice step one, the Federal Circuit affirmed that the challenged claims were directed to a patent-ineligible concept and, under step two, that the elements of the claims, both individually and as an ordered combination, failed to “transform” the claims into patent-eligible applications. The Federal Circuit also rejected TT’s attempt to rely on non-precedential decisions of the Federal Circuit, and dismissed TT’s four-sentence challenge to the constitutionality of CBM review.
The opinion can be found here.