Federal Circuit 20042005

1
Federal Circuit 2004-2005
A Year in Review
June/July 2004 June/July 2005

• Gale R. Peterson
• Cox Smith Matthews
• San Antonio, Texas

IPO Annual Meeting September 11-13, 2005,
Seattle, Washington
2
Novelty and the Loss of Rightto a Patent - 102

• Highlights
• Increased emphasis on claim construction
• Disagreements re inherency resolved
• Continuing struggle w/ on sale and in public
  use issues

3
Claim Construction-Anticipation

• More than 9 new cases
• Unitherm Food Sys. v. Swift-Eckrich, Inc., 340
  F.3d 1314 (Fed. Cir. 2004)(J. Bryson JJ. Lourie
  and Rader) p. 6
• In re Crish, 393 F.3d 1253 (Fed. Cir. 2004) (J.
  Lourie Circuit Judge Mayer, J. Dyk) p. 8
• Alza v. Mylan Labs., 391 F.3d 1365 (Fed. Cir.
  2004)(SJ. Archer J. Newman concurring-in-part,
  dissenting-in-part J. Dyk) p. 9
• Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313
  (Fed. Cir. 2005)(J. Bryson SJ. Friedman and J.
  Radar) p. 12

4
Claim Construction-Anticipation

• More than 9 new cases
• Sentry Protective Products, Inc. v. Eagle
  Manufacturing Co., 400 F.3d 910 (Fed. Cir. 2005)
  - J. Prost JJ. Lourie and Schall p. 14
• MercExchange, L.L.C. v. eBay, Inc., 401 F.3d 1323
  (Fed. Cir. 2005) J. Bryson - CJ Michel, J.
  Clevenger p. 16
• ArthroCare Corp. v. Smith Nephew, Inc., 406
  F.3d 1365 (Fed. Cir. 2005) J. Bryson JJ. Mayer
  and Lourie p. 17
• Prima Tek II, L.L.C. v. Polypap, S.A.R.L. (Prima
  Tek -2), ___ F.3d ____ (Fed. Cir. 2005) J. Dyk
  J. Gajarsa, SCJ. Plager p. 18
• Northpoint Tech., Ltd. v. MDS-Am., Inc., ___ F.3d
  ___ (Fed. Cir. 2005)(J. Bryson J. Schall,
  concurring-in-part, dissenting-in-part J. Dyk)
  p. 22

5
Claim Construction-Anticipation
Unitherm Food Sys. v. Swift-Eckrich, Inc., 340
F.3d 1314 ( Fed. Cir. 2004)(J. Bryson JJ.
Lourie and Rader) p. 6

• Numeric Ranges - Not Read Into Claims
• Evid - Accused Infr Prior In Public Use
• Method - browning of pre-cooked meat
• ConAgra - ltr to industry will enforce patent
• Unitherm d/j invalid Walker-Process Sherman
  2
• Process - invented demonstrated to ConAgra critical date prior in public use
• Golden Brown color not ltd by spec
• Invalid

6
Claim Construction-Anticipation
Northpoint Tech., Ltd. v. MDS-Am., Inc., ___ F.3d
___ (Fed. Cir. 2005)(J. Bryson J. Schall,
concurring-in-part, dissenting-in-part J. Dyk)
p. 22

• Claim Construction Results in Finding of
  Anticipation
• transmitting terrestrial signals - common
  frequency w/ satellite
• Northpoint - p/a did not teach antennas pointed
  opp directions
• D. Ct. - directional reception range not ltd
  where receiving antenna pointed
• Fed. Cir. - Affd

7
Inherency

• Highlights
• Whether one of ordinary skill in the art must
  have recognized the inherency now resolved?

8
Inherency

• Generally
• A prior art reference that does not explicitly
  disclose or teach a particular claim element may
  nevertheless anticipate a claim containing such
  an element if the prior art inherently discloses
  the element
• In order to establish inherency, the extrinsic
  evidence must make clear that the missing
  descriptive matter is necessarily present in the
  thing described in the reference and that it
  would be so recognized by persons of ordinary
  skill.
• Continental Can Co. USA v. Monsanto Co. (1991)
  J. Newman

9
Anticipation - Shown Through Inherency

• Must one of ordinary skill in the art recognize
  what was asserted to be inherent?

Continental Can 1991 Yes MEHL/Biophile 1999
No Atlas Powder 1999 No EMI Group 2001 No

• Elan Pharms., Inc. v. Mayo Found. For Med.
  Res., 304 F.3d 1221 (Fed. Cir. 2002) VACATED
  (en banc) Alzheimer Yes (J. Newman JJ.
  Gajarsa Dyk) p. 27
• Majority (Newman) one of ordinary skill in
  the art would not have recognized the asserted
  inherency
• Dissent (Dyk) it matters not that those of
  ordinary skill heretofore may not have recognized
  these inherent characteristics.
• Replacement Opinion - 346 F.3d 1051 (Fed.
  Cir. 2003) Remanded to determine whether p/a
  was enabling

10
Anticipation - Shown Through Inherency

• Schering Corp. v. Geneva Pharms., 339 F.3d 1373
  (Fed. Cir. 2003)(J. Rader SCJ Plager J.
  Bryson) p. 27
• (1) An inherent feature of a p/a reference need
  not be perceived as such by a person of ordinary
  skill in the art before the critical date
• (2) A p/a reference may inherently anticipate the
  entire claimed subject matter even though not
  mentioned
• Patent 1 Loratadine CLARITIN
• Patent 2 Metabolite of loratadine - DCL
• Patent 1 p/a to Patent 2
• DCL formed when patient ingested loratadine
• this courts precedent does not require a
  skilled artisan to recognize the inherent
  characteristic in the p/a that anticipates the
  claimed invention.

11
Anticipation - Shown Through Inherency

• Schering Corp. v. Geneva Pharms. (Schering II),
  348 F.3d 992 (Fed. Cir. 2003)(J. Rader w/ SCJ
  Plager and J. Bryson)
• Pet. for panel rehg denied
• Pet. for rehg en banc - denied
• Dissents - Judges Newman and Lourie
• Judge Gajarsa - would rehear en banc
• Judge Schall - did not participate in the vote

12
Anticipation - Shown Through Inherency

• Toro Co. v. Deere Co., 355 F.3d 1313 (Fed. Cir.
  2004)(J. Michel - JJ. Lourie and Linn) pg. 28
• Schering is the law

13
Anticipation - Shown Through Inherency

• Toro Co. v. Deere Co., - Contd
• Simply put, the fact that a characteristic is a
  necessary feature or result of a prior-art
  embodiment (that is itself sufficiently described
  and enabled) is enough for inherent anticipation,
  even if that fact was unknown at the time of the
  prior invention.

14
Anticipation - Shown Through Inherency
SmithKline Beecham Corp. v. Apotex Corp.
(SmithKline III)., 403 F.3d 1331 (Fed. Cir.
2005)(J. Rader - J. Bryson, concurring opinion J
Gajarsa) p. 29

• When a Product is Naturally Produced by
  Practicing the Prior Art, There is Inherent
  Anticipation
• Claim Crystalline paroxetine hydrochloride
  PHC hemihydrate.
• Paroxetine cmpd known from 70s
• Ferrosan now expired 196 patent PHC
  anhydrate antidepressant licensed to SKB
• Late 1980s SKB scientist in UK develops
  crystalline form more stable FDA approval
  PAXIL? - 1993
• Apotex ANDA PHC anhydrate
• SKB infringes disappearing polymorph once
  crystalline form made environment is seeded
  cannot produce pure form of PHC anhydrate w/o
  some crystalline form

15
Anticipation - Shown Through Inherency
SmithKline III - Contd

• D Ct CJ Posner ltd claim to commercially
  significant amts of crystalline
• Fed Cir error nothing in claim so requires
• D Ct no infg equity SK created the problem
• Fed Cir unnecessary to address potential
  merit
• Fed Cir (First Opinion) crystalline form idd
  in 1985 in UK
• U.S. clinical tests 1985
• UK appl 1985
• US appl 1986 1 yr after US clinical trials
• SK experimental testing
• Fed Cir NO
• Everybody petitions for rehearing rehearing
  en banc

16
Anticipation - Shown Through Inherency
SmithKline III - Contd

• Fed Cir (Second Opinion) inherent anticipation
  by 196 patent under Schering rationale
• Problems
• D Ct rejected inherent anticipation Apotex
  did not appeal
• SKB pet rehrg did not use 196 process
  cannot be inherent anticipation
• Pet rehrg rehrg en banc denied
• Judge Gajarsa concurring
• B/C claim to cmpd invalid under 101 as
  naturally occurring.

17
Anticipation - Anticipation of Quantitative Claim
Terms Cannot Be Shown by Relying on Prior Art
Patent Drawings Alone

• Nystrom v. TREX Co., Inc., 374 F.3d 1105 (Fed.
  Cir. 2004)(J. Linn - CJ Mayer J. Gajarsa) - p.
  37

Claim defining a difference in thickness
between the longitudinal centerline and the
opposite side edges, with the ratio of said
difference in thickness to the width of the board
being about 140
18
Anticipation

• Nystrom v. TREX Co.- Contd
• TREX invalid computer modeling p/a dwg
• D Ct s/j invalid
• Fed Cir - REVD
• Under the principles set forth in our prior
  cases, the speculative modeling premised on
  unstated assumptions in prior art patent drawings
  cannot be the basis for challenging the validity
  of claims reciting specific dimensions not
  disclosed directly in such prior art.

19
Anticipation - Summary Judgment is Not
Appropriate Where the Opposing Party Offers
Specific Facts That Call into Question the
Credibility of the Movants Witnesses

• TypeRight Keyboard Corp. v. Microsoft Corp., 374
  F.3d 1151 (Fed. Cir. 2004)(JJ. Dyke - Lourie and
  Shall) - p. 40
• TypeRight owner 2 patents V-shaped keybrds
  critical date 2/21/90
• MS invalid Marquardt doc undated showed
  unlabeled pix of V-shaped keybrds
• Fed Cir MS - several consultants who were paid
  for the time they spent testifying.
• Dr. Cakir fd doc in his file from 1990 but
  thought he had recd doc at trade show in 1986
• Dr. Hirsch recalled seeing similar pix in
  1986
• No one ever contacted Marquardt GmbH
• Fed Cir summary judgment is not appropriate
  where the opposing party offers specific facts
  that call into question the credibility of the
  movants witnesses.

20
Anticipation - Testimony

• Schumer v. Lab. Computer Sys., Inc. (2002)
• Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d
  1142 (Fed. Cir. 2004)(J. Gajarsa JJ. Bryson and
  Dyk) - p. 42
• Testimony Concerning Anticipation Must (1) Be
  From One Skilled in the Art, (2) Identify Each
  Claim Element, (3) State the Witnesses
  Interpretation of the Claim Element, and (4)
  Explain in Detail How Each Claim element is
  Disclosed in the Prior Art
• Turn-Keys patent cross-laminating layers of
  plastic
• Koito d/j invalid jury agreed
• Turn-Key JMOL
• D Ct DENIED relied on single p/a ref Koito
  introduced into evid but w/o testimony
• Fed Cir ERROR In order to prove anticipation
  testimony of the type described in Schumer is
  reqd

21
Anticipation Enabling Disclosure

• In re Elsner, 381 F.3d 1125 (Fed. Cir. 2004)(JJ.
  Lourie - Clevenger and Bryson)(companion case w/
  similar facts) p. 43
• Evidence of a Foreign Sale of a Claimed
  Reproducible Plant Variety May Enable an
  Otherwise Non-Enabled Printed Publication
  Disclosing That Plant and Thereby Creating a
  102(b) Bar
• Elsner plant breeder Germany new geranium
  Pendec
• 1997 filed Community Plant Variety Rts cert. in
  Germany
• Published w/ name address of breeder
• 1998 Pendec sold in Germany
• 1999 Elsner w/drew application
• 2000 filed plant patent appl. in U.S.
• PTO rejd CPVO pub and sale placed skilled
  artisan in possession of the invention
• LeGrice CCPA 1962 - 162 plant patent
  appls need not comply w/ 112 BUT reference
  must be enabling

22
Anticipation Enabling Disclosure

• In re Elsner Contd
• PTO LeGrice did not decide - foreign sale
  could enable
• Fed Cir agreed issue whether evidence of
  the foreign sale of a claimed reproducible plant
  variety may enable an otherwise non-enabled
  printed publication disclosing that plant,
  thereby creating a 102(b) bar. YES
• Fed Cir When a publication identifies the
  plant that is invented or discovered and a
  foreign sale occurs that puts one of ordinary
  skill in the art in possession of the plant
  itself, which, based on the level of ordinary
  skill in the art, permits asexual reproduction
  without undue experimentation, that combination
  of facts and events so directly conveys the
  essential knowledge of the invention that the
  sale combines with the publication to erect a
  statutory bar.

23
Anticipation Enabling Disclosure

• In re Elsner Contd
• REMANDED to consider how readily one skilled
  in the art could have learned of the foreign
  sales from the printed PBR applications.
• it is unclear whether a skilled artisan
  would have known of the foreign sales. The
  foreign sale must not be an obscure, solitary
  occurrence that would go unnoticed by those
  skilled in the art. Its availability must have
  been known in the art, just as a printed
  publication must be publicly available.

24
Anticipation Rule 105

• Star Fruits v. United States., 343 F.3d 1277
  (Fed. Cir. 2005)(J. Clevenger J. Dyk,
  dissenting J. Newman) p. 49
• Failure to Respond to a Request for Information
  Under Rule 105 May Lead to Abandonment of the
  Application Rule 105 is Enforceable
• Rule 105 exr may require submission of
  information as may be reasonably necessary to
  properly examine or treat the matter
• Peach tree
• Exr Any info re sale/public distribution of
  plant variety anywhere in the world
• Star Fruits refd Rule 56
• PTO - abnd
• Fed Cir Affd abandonment

25
Anticipation Enabling Disclosure

• Rasmusson v. SmithKline Beecham Corp., ___ F.3d
  ___ (Fed. Cir. 2004)(J. Bryson SJ. Plager and
  J. Prost) p. 56
• A Reference Must Be Enabling to Anticipate, But
  That is Different from the Enablement Requirement
  of 112(1)
• Method treating prostate cancer - finasteride
• Bd - publd app could not anticipate b/c app
  failed to demonstrate finasteride effective in
  treating prostate cancer, plus app provided no
  reasonable expectation of success
• Fed. Cir. REVD REMANDED the standard for
  proper enablement of a prior art reference
  for    anticipation under section 102
  differs from the enablement standard under
  section 112. Prior art reference need not
  demonstrate utility in order to serve as an
  anticipating reference under section 102.

26
Loss of Rights - 102(b) Patented or Described
in a Printed Publication - Public Accessibility

• In re Klopfenstein, 380 F.3d 1345 (Fed. Cir.
  2004)(J. Prost, JJ Michel and Schall) p. 67
• Poster Presentation May Qualify as a Printed
  Pub
• Method - preparing food using extruded soy fiber
• Fed Cir Factors - poster presentation printed
  pub
• the length of time the display was exhibited,
• the expertise of the target audience,
• the existence (or lack thereof) of reasonable
  expectations that the material displayed would
  not be copied, and
• the simplicity or ease with which the material
  displayed could have been copied.
• Fed Cir key ? Is whether ref is publicly
  available
• 14 slides displayed on poster for 2 ½ days
  publicly available

27
Loss of Rights - 102(b) On Sale

• UMC Electronics Co. v. United States, 816 F.2d
  647 (Fed. Cir. 1987) ARTP not a prerequisite
• Pfaff v. Wells Electronics, 525 U.S. 55 (1998)
  (1) First, the product must be the subject of a
  commercial offer for sale and (2) Second, the
  invention must be ready for patenting.
• Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d
  1041 (Fed. Cir. 2001) (1) a commercial offer
  for sale requires an offer that meets the level
  of an offer for sale in the contract sense, (2)
  decided per Federal Circuit law will look to
  UCC, Restatement (2d) of Contracts, among other
  sources
• Linear Technology Corp. v. Micrel, Inc., 275 F.3d
  1040 (Fed. Cir. 2001) UCC varies will look
  for common denominator

28
Loss of Rights - 102(b) On Sale

• Sparton Corp. v. United States, 399 F.3d 1324
  (Fed. Cir. 2005)(SJ. Archer - CJ. Michel and J.
  Schall) p. 74
• With No Conception of an Invention, There Cannot
  Be An Offer for Sale or Sale of That Invention
• Alleged sale - 1971 ECP to Navy - dual depth -
  sonobuoys
• ECP did not propose patented invention
• Invention later developed included in actual
  buoys
• Govt Claims Ct U.C.C. 2-106, 2-311
  Sparton could substitute conforming goods
  therefore sale.
• FED CIR under the Claims Courts analysis,
  the patented single part release plate was the
  subject of an offer for sale before it was even
  conceived. Such a result is illogical.

29
Loss of Rights - 102(b) On Sale

• in public use and on sale bars diff
  rationales
• experimental use negation of in public use
• EZ Dock, Inc. v. Schafer Systems, Inc., 276 F.3d
  1347, 61 USPQ2d 1289 (Fed. Cir. 2002) J. Rader,
  CJ Mayer, additional views J. Linn
• the question posed by the experimental use
  doctrine, assessed under the first prong of the
  two-part on-sale bar test is whether the
  primary purpose of the inventor at the time of
  the sale, as determined from an objective
  evaluation of the facts surrounding the
  transaction, was to conduct experimentation.
• Suggests 13 factors - Baker Oil Tools - 1987

30
Loss of Rights - 102(b) On Sale

• Allen Engineering Corp. v. Bartell Industries,
  Inc., 299 F.3d 1336 (Fed. Cir. 2002) J. Linn,
  JJ. Gajarsa and Prost
• First prong Pfaff analysis -
• Whether product was (1) the subject of a
  commercial offer for sale not primarily for
  purposes of experimentation   .
• Instructions to D. Ct.
• Must determine whether a commercial offer for
  sale has occurred, applying traditional contract
  law principles, and also whether the
  circumstances surrounding the transaction show
  that the transaction was not primarily for
  purposes of experimentation.
• Use 13 factors - EZ Dock

31
Loss of Rights - 102(b) On Sale

• - Customer Awareness and Control by the Inventor
  Are Critical to a Finding of Experimental
  Negation of on sale Activity Analysis is First
  to Determine Whether Any Pre-Critical Date
  Sales As Contemplated by 102(b) Were Made and
  Then to Determine Whether Such Sales Were
  Negated By Experimentation
• Electromotive Division of General Motors Corp. v.
  Transportation Systems Division of General
  Electric Co., ___ F.3d ____, ____ USPQ2d ____
  (Fed. Cir. 2005) C.J. Michel, SCJ Plager, J.
  Linn NEW
• Bearings locomotive turbochargers
• EMD in-house testing field durability testing
• Substituted bearings preordered locomotives
• Sales no customer awareness no control

32
Obviousness - 103 Claim Construction

• Merck Co. v. Teva Pharms., 395 F.3d 1364 (Fed.
  Cir. 2005)(J. Gajarsa J. Prost, dissenting J.
  Radar) p. 90
• The Term about Means approximately When a
  Patentee Redefines a Term in the Specification,
  He Must Clearly do so Circuit Judge Rader
  Dissenting Court has a Truth in Advertising
  Problem
• Cmpds treat osteoporosis but adverse
  gastrointestinal side effects administered in
  small daily doses
• Invention - Once weekly higher doses
• Claim - about 70/35 mg once weekly
• Spec defined about equivalent to 70 or 35
  mg
• P/a - intermittent treatment program once
  weekly dosage schedule of 40mg OR 80mg
• D. Ct. - about means exactly 70/35 mg - not
  obvious
• Fed. Cir. REVD about means approximately
• J. Radar spec defined about

33
Obviousness

• In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004) (J.
  Rader J. Schall, dissent by J. Newman) p. 94
• Claims Are Given Their Broadest Reasonable
  Interpretation During Ex Parte Prosecution -
  Hair Brush Not Limited to One For Brushing
  Scalp Hair
• Claims hair brush
• P/A toothbrushes
• Fed. Cir. majority tooth brushes could be used
  for brushing hair, ie, facial hair
• J. Newman dissented noting a brush for hair has
  no more relation to a brush for teeth than does
  hair resemble teeth

34
Obviousness Range Cases

• Iron Grip Barbell Co. v. USA Sports, Inc., 392
  F.3d 1317 (Fed. Cir. 2004)(J. Dyk J. Newman and
  SJ. Archer) p. 103
• Where There is a Range Disclosed in the Prior
  Art, and the Claimed Invention Falls Within That
  Range, There is a Presumption of Obviousness
• Invention weight plate w/ 3 handle openings
• p/a weight plates w/ 1, 2 and 4 grips
• Fed Cir where there is a range disclosed in
  the p/a, and the claimed invention falls within
  that range, there is a presumption of
  obviousness that may rebutted by showing (1)
  teaching away, or (2) unexpected results.

Patent-in-Suit Three-Grip Plate
Prior art
Invention
35
Obviousness Range Cases
In re Harris, ____ F.3d ____ (Fed. Cir. 2005)(J.
Rader J. Clevenger and SJ. Friedman) p. 111

• Where Claimed Range Is Completely Covered by P/A,
  Prima Facie Obvious Even More Compelling
• Nickel-based superalloy for turbine engine blades
  12 elements
• P/A Overlapped all 12 elements completely
  overlapped 11 elements
• No teaching away No unexpected results
• PTO rejection AFFD
• Fed. Cir. where the claimed ranges are
  completely encompassed by the prior art, the
  conclusion that the claims are prima facie
  obvious is even more compelling than in cases of
  mere overlap. 

36
ObviousnessCommercial Success
Merck Co. v. Teva Pharms., Inc., 395 F.3d 1364
(Fed. Cir. 2005)(J. Gajarsa - J. Prost,
dissenting J. Rader) p. 115

• Commercial Success is Not a Factor Where Market
  Entry by Others is Barred by FDA Developing
  Split
• Method treating osteporosis administering
  once-weekly doses cmpd
• Teva obvious Lunar News articles suggesting
  once-weekly doses close to claimed doses
• Fed Cir about means approximately invalid
• D Ct Evid of commercial success
• Fed Cir majority Not a factor
• Merck had another patent that precluded
  practicing the Lunar News method FDA procedure
  gave Merck exclusive rts.

37
ObviousnessCommercial Success
Merck Co. v. Teva Pharms., Inc. Contd

• Financial success is not significantly probative
  of that question obviousness in this case
  because others were legally barred from
  commercially testing the Lunar News ideas.
• because market entry by others was precluded
  on those bases, the inference of non-obviousness
  of weekly-dosing, from evidence of commercial
  success, is weak. Although commercial success may
  have probative value for finding non-obviousness
  of Mercks weekly-dosing regimen in some context,
  it is not enough to show the claims at bar are
  patentably distinct from the weekly-dosing ideas
  in the Lunar News articles.

38
ObviousnessCommercial Success
Merck Co. v. Teva Pharms., Inc. Contd

• Denied petitions for rehrng rehring en banc
• J. Lourie dissented joined by J. Newman C.J.
  Michel
• J. Lourie commercial success is a fact
  question, and, once it is established, as found
  here by the trial court, the only other question
  is whether the success is attributable to the
  claimed invention (nexus), rather than to other
  factors such as market power, advertising, demand
  for all products of a given type, a rising
  economy that lifts all boats, etc.

39
ObviousnessCommercial Success
Syntex (U.S.A.) LLC v. Apotex, 407 F.3d 1371
(Fed. Cir. 2005)(J. Gajarsa - J. Clevenger,
concurring J. Prost) 118

• Evidence of Commercial Success is a Weak Factor
  Where Market Entry by Others is Barred by Other
  Patents Disagreement Between Examiners May Be
  Evidence of Obviousness
• Ophthalmic formulation non-steriodal
  anti-inflammatory drug preservative
  surfactant (octoxynol 40 known, but not in
  ophthalmic formulations)
• Problem preservatives didnt mix well w/ NASIDs
• Surfactant used to make insoluble chems soluble
• Parent rejd art taught NASIDs preservative
  surfactant (but not octoxynol 40)
• Syntex declaration unexpected results
• Exr not persuaded

40
ObviousnessCommercial Success
Syntex (U.S.A.) LLC v. Apotex Contd

• Continuation new exr
• Same rejection
• Syntex had shown in parent unexpected results
• Exr allowed
• Fed Cir inconsistency between exrs significant
• Apotex ANDA
• D Ct infringed not invalid
• Fed Cir REVD D Ct had not properly
  considered evid of obviousness especially views
  of first exr
• Coml success D Ct should re-evaluate in view
  of Merck Assuming that the active ingredient
  in the formulation was previously patented, the
  coml success of ACULAR may heavily derive from
  subject matter that does not on the whole
  contribute to the patentable distinctiveness of
  these claims.

41
Enablement-Written Description-Best Mode

• Highlights
• Divisions within court on the test for compliance
  with the written description requirement
• Best mode analysis tied to claimed invention

42
Enablement-Written Description-Best ModeWritten
Description

• Test for Compliance
• Vas-Cath, Inc. v. Mahurkar (1991)
• Although the applicant does not have to describe
  exactly the subject matter claimed, the
  description must clearly allow persons of
  ordinary skill in the art to recognize that he or
  she invented what is claimed. The test for
  sufficiency of support is whether the
  disclosure of the application reasonably conveys
  to the artisan that the inventor had possession
  at that time of the later claimed matter.
• Possession of the invention currently under
  attack by some on the court.

43
Enablement-Written Description-Best ModeWritten
Description

• Test for Compliance
• Regents v. Eli Lilly (1997)(J. Lourie JJ.
  Newman Bryson)
• Gene material identified only by a statement of
  function or result did not adequately describe
  the claimed invention
• Written description of genetic material requires
  a precise definition, such as by structure,
  formula, chemical name, or physical properties.

44
Enablement-Written Description-Best ModeWritten
Description

• In re Wallach, 378 F.3d 1330 (Fed. Cir. 2004)(J.
  Lourie - JJ Mayer and Gajarsa) 130
• Failure to Disclose Less Than a Complete DNA
  Sequence May Not Satisfy the Written Description
  Requirement
• Discovery 2 specific proteins isolated from
  human urine selectively inhibited cytotoxic
  effect of tumor necrosis factor- TBP-I and TBP-II
• Disclosed partial DNA sequences molecular
  weight
• Claimed DNA molecules encoding those proteins
• Brd insufficient written description
• Fed Cir Affd Appellants concede that it is
  now known that urinary TBP-II has a sequence of
  185-192 amino acids. Without the approximately
  95 of the amino acid sequence that Appellants
  did not disclose, we cannot say that the DNA
  molecules claimed in the 129 application have
  been described.
• Fed Cir - until Appellants obtained the
  complete amino acid sequence of TBP-II, they had
  no more than a wish to know the identity of the
  DNA encoding it.

45
Enablement-Written Description-Best ModeWritten
Description

• Capon v. Eshhar, ___ F.3d ____ (Fed. Cir. 2005)
  J. Newman, JJ. Mayer and Gajarsa - New
• Whether the Written Description Requirement is
  Satisfied Must Take Into Account the State of
  Scientific Knowledge
• patent-application interference
• chimeric gene - combined DNA segments - enhanced
  immune response
• Brd w/o complete sequence Lilly et al. no
  written description support
• Fed Cir Revd depends on tech.

46
Enablement-Written Description-Best ModeWritten
Description

• Northpoint Tech., Inc. v. MDS-America, Inc., ___
  F.3d ___ (Fed. Cir. 2005)(J. Bryson J. Schall,
  concurring-in-part, dissenting-in-part J. Dyk)
  137
• Expert Testimony That Elaborate Measures, Not
  Described in the Patent, Were Required to Make
  the Claimed Invention Work Supports Conclusion
  That Claims are Invalid Due to Lack of Enabling
  Support
• Method and apparatus for transmitting terrestrial
  signals on a common frequency with satellite
  transmissions
• Jury - MDS infringed, but claims invalid as
  anticipated and non enabled
• Panel AFFD expert testimony
• J. Dyk dissenting experimentation not undue

47
Enablement-Written Description-Best ModeBest Mode

• Best Mode
• Unintentional omission of information known in
  the art is not deliberate concealment
• Best Mode analyzed in terms of claimed invention

48
Enablement-Written Description-Best ModeBest Mode

• The Best Mode Requirement Is Not Violated by
  Unintentional Omission of Information That Would
  be Readily Known to Persons in the Field of the
  Invention
• High Concrete Structures v. New Enterprise, 377
  F.3d 1379 (Fed. Cir. 2004)(J. Newman - CJ. Mayer
  and J. Clevenger) p. 142
• Tilt carrying heavy concrete structures
• Spec can be rotated manually
• Inventors depo helps to use a crane
• No concealment of best mode

49
Enablement-Written Description-Best ModeBest Mode

• Cardiac Pacemakers v. St. Jude, 381 F.3d 1374
  (Fed. Cir. 2004)(J. Newman SJ. Friedman and J.
  Rader) p. 143
• The Best Mode Requirement Relates to Invention
  Disclosed and Claimed
• Implantable cardiac defibrillators could detect
  type of arrhythmia
• Asked Honeywell to develop new battery it did
• Battery not disclosed or claimed other
  batteries could be used
• Persons knowledgeable in the field would know
  where to get batteries

50
Particularly Point Out and Distinctly ClaimWhat
the Applicant Regards as His Invention

• 112(2) Particularly Point Out and Distinctly
  Claim
• Judged from perspective of one of ordinary skill
  in the art
• Not invalid unless insolubly ambiguous

51
Particularly Point Out and Distinctly ClaimWhat
the Applicant Regards as His Invention

• Bancorp v. Hartford Life, 359 F.3d 1367 (Fed.
  Cir. 2004)(J. Bryson JJ. Rader and Prost) p.
  146
• If Claim is Not Insolubly Ambiguous, It is Not
  Invalid for Indefiniteness
• System for tracking value of life insurance
  policies in separate accounts
• surrender value protected investment credits
  not defined in patent not a term of art
• D Ct invalid indefinite
• Fed. Cir. REVD components of the term have
  well-recognized meanings, which allow the reader
  to infer the meaning of the entire phrase with
  reasonable confidence.

52
Particularly Point Out and Distinctly ClaimWhat
the Applicant Regards as His Invention

• Howmedica Osteonics Corp. v. Tranquil Prospects,
  Ltd., 401 F.3d 1367 (Fed. Cir. 2005)(J. Rader -
  JJ. Dyk and Prost) p. 147
• A Claim is Definite if Its Legal Scope is Clear
  Enough That a Person of Ordinary Skill in The Art
  Could Determine Whether a Particular Product or
  Process Infringes or Not
• intramedullary prosthesis and method of
  implanting hip joint
• Claim 70 of transverse sectional dimensions
  of long bone
• ? dimensions refer to 1-D or 2-D
• D Ct indefinite Fed Cir REVD one of
  ordinary skill in the art would understand from
  spec that dimensions referred to 2-D

53
Particularly Point Out and Distinctly ClaimWhat
the Applicant Regards as His Invention

• Marley Mouldings Ltd. v. Mikron Indus., Inc., ___
  F.3d ____ (Fed. Cir. 2005) J. Newman JJ. Schall
  and Dyk
• Claims Are Not Indefinite Even Though Tests Do
  Not Definitively Show Infringement or
  Non-Infringement
• Composite frame molding
• Claims wood flour in parts (volume)
• Equations relating weigh volume depends on
  density
• Marley inf tests using lowest density spec
  sheet range
• Mikron non-inf tests using avg density
• Fed Cir not indefinite not insolubly ambiguous

54
Particularly Point Out and Distinctly ClaimWhat
the Applicant Regards as His Invention

• Datamize, L.L.C. v. Plumtree Software, Inc., ___
  F.3d ____ (Fed. Cir. 2005) J. Prost, JJ.
  Clevenger and Bryson - NEW
• aesthetically pleasing Renders Claims
  Indefinite Some Objective Standard Must Appear
  in the Claims, Specification or Prosecution
  History
• software - authoring user interfaces - electronic
  kiosks
• Claims aesthetically pleasing look and feel
  for said interface screens
• Fed Cir indefinite - simply put, the
  definition of aesthetically pleasing cannot
  depend on an undefined standard.
• Look to claims spec prosecution history

55
Inventorship

• Eli Lilly v. Aradigm, 376 F.3d 1352 (Fed. Cir.
  2004)(J. Clevenger J. Gajarsa, concurring J.
  Lourie) p. 153
• One Claiming To Have Been Improperly Omitted As A
  Joint Inventor Must Show A Contribution To
  Conception Of The Claimed Invention, And That
  Showing Must Meet A Clear And Convincing Level
  Of Proof
• Methods of aerosolized administration of insulin
  analogs
• Fed. Cir. pty claiming nonjoinder/misjoinder
  must meet heavy burden by clear and convincing
  evidence and must provide evidence to
  corroborate the alleged joint inventors
  conception   .
• Caterpillar, Inc. v. Sturman Indus., Inc., 387
  F.3d 1358 (Fed. Cir. 2005)(J. Prost JJ. Newman
  and Dyk) p. 155
• There Is a Presumption That Patents Name Correct
  Inventors

56
Legal Ethics Inequitable Conduct

• WATCH OUT FOR
• Changing standard of materiality

57
Legal Ethics Inequitable Conduct

• The Elements
• Materiality
• Intent

58
Legal Ethics Inequitable Conduct

• Materiality Evolving Standard
• Pre-1977 74 OG Guidelines Rule 56 (appl.
  stricken if fraud) Case law (generally
  related to patentability)
• 1977 reasonable examiner standard paraphrased
  from SEC disclosure standard for unsophisticated
  investors
• 1982 Claims may be rejected appeal to Brd
• 1983 Renamed P/A Statement to IDS
• 1987 AIPLA Blue Ribbon Committee
• 1988 PTO Proposed Rule 57 but for standard
• 1988 Kingsdown Harita PTO disbands fraud
  squad will not investigate or reject
• 1989 Revised Rule 57 proposed Commr Quigg
  resigns
• 1990 Commr Manbeck formally w/draws Rule 57
• 1991 Draft new Rule 56 announced
• 1992 New Rule 56 eff. March 16, 1992
• 2000 Duty to disclose new art in CIP

59
Legal Ethics Inequitable Conduct

• New Rule 56
• Applies to applications reexams pending filed
  aft. 3/16/92
• Duty of disclosure applies to pending claims
• Duty satisfied if material art is cited by PTO or
  submitted to PTO
• Materiality
• Cumulative art not material
• Prima Facie Standard
• Claim not patentable
• Refutes/inconsistent w/ argument or position
• Preponderance of the evidence standard
• Terms given broadest reasonable construction
• Before considering contrary evidence
• January 11, 2005 - CAFC panel adopts new Rule
  56
• Does not reconcile prior cases strongly
  suggesting materiality standard of new Rule 56
  does not apply to IE

60
Legal Ethics Inequitable Conduct

• J.P. Stevens I (1984)
• Inequitable conduct requires clear convincing
  proof
• Non-disclosed or false info must meet a
  threshold degree of materiality
• Hoffman-La Roche (2003)
• Interpreted New Rule 56 as not a significant
  break in the previous reasonable examiner
  standard
• Dayco Products II (2003)
• Final disposition the same under either
  materiality standard - pass on disposing of the
  issue but also suggests new Rule 56 is not
  the standard

61
Inequitable ConductWhich Standard Controls?

• Bruno Indep. Living Aids, Inc. v. Acorn Mobility
  Servs. Ltd., 394 F.3d 1348 (Fed. Cir. 2005)(J.
  Lourie JJ. Gajarsa and Linn) p. 160
• A Panel of the Court Adopts the Materiality
  Standard of New Rule 56
• Stairlift
• P/A Wecolator similar stairlift mfd by 3/P
• Urged stairlift was Substantial Equivalent to
  Wecolator when seeking FDA approval
• Did not disclose Wecolator to PTO
• D. Ct. invalid for IE case exceptional for
  atty fees
• Fed. Cir. AFFD Adopted new Rule 56 - Bruno
  knew or should have known of materiality
• If Wecolator had been disclosed, Bruno could not
  have made argument during prosecution

62
Inequitable Conduct

• Purdue Pharma L.P. v. Endo Pharms., Inc., 394
  F.3d 1348 (Fed. Cir. 2005)(SJ. Plager JJ.
  Gajarsa and Linn) p. 168
• Repeated Assertions of a Surprising Discovery
  May Constitute Inequitable Conduct When Not Based
  on Scientific Proof
• Controlled release of oxycodone formulations
• Purdue relied on surprising discovery to
  overcome 103 rejections
• Inventor testified it was insight, rather than
  scientific proof, that formed basis of assertion
• D. Ct. p-i-s infringed, but unenforceable due
  to inequitable conduct
• Fed. Cir. absent statement re origin of
  surprising discovery, arguments enough of a
  suggestion that clinical trials had been
  performed   .
• Fed. Cir. - Purdue made a deliberate decision to
  withhold and thus misrepresent the origin of its
  discovery to the PTO.
• AFFD

63
Inequitable Conduct Intent

• Bruno Indep. Living Aids, Inc. v. Acorn Mobility
  Servs. Ltd., 394 F.3d 1348 (Fed. Cir. 2005)(J.
  Lourie JJ. Gajarsa and Linn) p. 171
• Inferred Failure to Provide a Good Faith Reason
  for Nondisclosure May lead to an Inference of
  Intent to Deceive
• Fed. Cir. Intent need not, and rarely can, be
  proven by direct evidence.
• Rather, in the absence of a credible
  explanation, intent to deceive is generally
  inferred from the facts and circumstances
  surrounding a knowing failure to disclose
  material information.

64
Inequitable Conduct Intent

• Frazier v. Roessel Cine Photo Tech, Inc., ___
  F.3d ____ (Fed. Cir. 2005) J. Linn J. Dyk,
  concurring-in-part and dissenting-in-part J.
  Bryson - NEW
• Inferred Allowing a Video to be Submitted to
  the PTO in Order to Represent the Capabilities of
  a Lens, Knowing That The Video Was Shot With a
  Different Lens is Sufficient to Infer Intent to
  Deceive
• D Ct Frazier not credible changed story
• Fed Cir the district courts unchallenged
  findings establish that Frazier allowed a video
  to be submitted to the PTO in order to represent
  the capabilities of the claimed lens, knowing
  that portions of the video were shot with a
  different lens. The district courts finding of
  intent is not clearly erroneous on these facts.

65
Inequitable Conduct Intent

• Pharmacia Corp. v. Par Pharma., Inc., ___ F.3d
  ____ (Fed. Cir. 2005) J. Rader, JJ. Schall
  Linn- NEW
• A Terminal Disclaimer Does Not Cause Inequitable
  Conduct in One Patent to Infect Another Patent A
  High Degree of Materiality, in The Absence of a
  Credible Explanation, May Support an Inference of
  Intent to Deceive
• Patent A Ineq. Cond. Declaration inconsistent
  w/ prior article by declarant not disclosed
• Patent B ineq. cond. Not inferred b/c of term
  discl.

66
Inequitable Conduct Intent

• A Plausible, Good Faith Explanation of Why
  Information Was Not Cited May Avoid a Finding of
  Intent to Deceive
• Warner-Lambert Co. v. Teva Pharma. USA, Inc., ___
  F.3d ____ (Fed. Cir. 2005) J. Schall, JJ. Linn
  Prost New Non-disclosed prior tests of
  competitive product
• TAP Pharma. Products, Inc. v. OWL Pharma.,
  L.L.C., ___ F.3d ____ (Fed. Cir. 2005) J.
  Bryson, JJ. Newman Gajarsa New Prior art
  Foreign search report

67
Legal Ethics Inequitable Conduct

• Unitherm Food Sys. v. Swift-Eckrich, Inc., 375
  F.3d 1341 (Fed. Cir. 2004)(J. Gajarsa - JJ.
  Schall and Linn) p. 172
• A Walker Process -Type Antitrust Claim Requires
  Proof Not Only Of Fraud On the PTO, But The Other
  Elements Of A Sherman Act 2 Claim As Well
• Federal Circuit antitrust law centers on a single
  question What behavior by the patentee in
  procuring or enforcing a patent can strip the
  patentee of antitrust immunity?
• Found elements of Walker Process -type AT
  satisfied, but other elements product market
  for Sherman 2 claim not satisfied

68
Reissue - Reexamination

• N. Am. Container, Inc. v. Plastipak Packaging,
  Inc., ___ F.3d ___ (Fed. Cir. 2005)(J. Lourie -
  JJ. Bryson and Linn) p. 177
• Recapture Estoppel Applied
• Blow-molded bottles
• Prosecution added generally convex - overcome
  103 rejections
• Reissue app deleted inner wall portions are
  generally convex
• Protests - recapture - exr not critical
• D. Ct. claims invalid violated recapture rule
• Fed. Cir. AFFD exrs denial of protests
  demonstrates his inattention to the rule
  against recapture.

69
Claim Construction

• Highlights
• Division among judges re strict application of
  the ordinary meaning of claim terms
• Refusal to limit claims to disclosed
  embodiment(s), unless clear statements that
  invention is so limited
• May be ltd to spec when claim is ambiguous
• BUT some judges rebelling claims should be ltd
  to actual invention
• Phillips v. AWH anti-climatic but does case
  signal narrower construction?

70
Claim Construction

• Johnson Worldwide v. Zebco 1999
• Renishaw v. Marposs 1998
• Focus on ordinary meaning of the claims
• Trend 1997 most of 2001 limit claims b/c of
  written description
• Wang Labs. v. AOL
• SciMed v. Advanced Cardiovascular Systems
• Netword v. Centraal Corp.
• Toro v. White Consolidated
• Bell Atlantic v. Conrad
• Trend 2002-2003 refocus on ordinary meaning
• CCS Fitness, Inc. v. Brunswick Corp.
• Teleflex, Inc. v. Ficosa North America Corp.
• Texas Digital v. Telegenix
• 2003-2005 Some Judges what is the invention?
• 2005 - Phillips v. AWH ?

71
Claim Construction

• Cases generally emphasizing claim language not
  ltd by specification

72
Claim Construction

• Nystrom v. TREX, 374 F.3d 1105 (Fed. Cir.
  2004)(J. Linn and CJ. Mayer, dissent J. Gajarsa)
  p. 187

• a board
• D Ct wood
• Dictionary defs wood or other rigid material
• Maj not ltd to wood
• J. Gajarsa when multiple definitions are
  conflicting look to intrinsic evid Novartis
  v. Eon
• Maj Construction should add all definitions
  found support in spec although tenuous
  Novartis cannot override earlier panel opinions

73
Claim Construction

• Numeric Ranges From Specification Examples Do Not
  Represent a Disavowal of the Common Meaning of
  the Term
• Unitherm Food Sys. v. Swift-Eckrich, Inc., 375
  F.3d 1341 (Fed. Cir. 2004)(J. Gajarsa JJ.
  Schall and Linn) p. 190
• ConAgra urged that Unitherm process not the same
  b/c it did not produce golden-brown color
• D. Ct. concluded that patentee did not act his on
  lexicographer
• Reference to Hunter-Lab Color Meter
  measurements to describe color merely examples
• No disavowal of common meaning

74
Claim Construction

• W.E. Hall v. Atlanta Corrugating, 370 F.3d 1343
  (Fed. Cir. 2004) (J. Gajarsa JJ. Linn and
  Prost) p. 191
• If the Written Description or Prosecution History
  are Ambiguous as to Whether a Patentee Used a
  Term Consistent with the Ordinary and Custom
  Meaning, the Ordinary and Customary Meaning
  Prevails
• ribs defining a plurality of open channels

75
Claim Construction

• W.E. Hall v. Atlanta Corrugating Contd
• Argued over p/a Nyssen pipes didnt need
  element 30

76
Claim Construction

• W.E. Hall v. Atlanta Corrugating Contd
• Arguments during prosecution clear meaning of
  open

77
Claim Construction - Summary

• Housey Pharms. v. Astrazeneca, 366 F.3d 1348
  (Fed. Cir. 2004)(J. Clevenger - CJ. Mayer,
  dissenting J. Newman) p. 194
• The plain meaning of claim terms control even
  though the result is that the claims concededly
  are invalid and non-infringed
• Split plain meaning v. read in the context of
  the spec
• Vanderlande Ind. V. U.S. ITC, 366 F.3d 1311 (Fed.
  Cir. 2004) (J. Michel JJ. Gajarsa and Linn)
  p. 195
• General-usage dictionaries are irrelevant where
  there is evidence that artisans in the field
  would attach a special meaning to a claim term,
  or no meaning at all

78
Claim Construction - Summary

• TI Group v. Automotive, 375 F.3d 1126 (Fed. Cir.
  2004)(J. Prost J. Gajarsa, dissent J. Bryson)
  p. 198
• The plain meaning of reservoir and within
  avoids infringement
• Mars, Inc. v. H.J. Heinz, 377 F.3d 1369 (Fed.
  Cir. 2004)(J. Dyk JJ. Schall and Prost) p.
  200
• Containing and Mixture are open-ended terms
  that do not exclude the presence of unlisted
  ingredients

79
Claim Construction - Summary

• Innova/Pure Water v. Safari Water, 381 F.3d 1111
  (Fed. Cir. 2004)(J. Clevenger JJ. Rader and
  Linn) p. 202
• It is a bedrock principle of patent law that the
  claims of a patent define the invention to which
  the patentee is entitled the right to exclude
• Home Diagnostics v. LifeScan, 381 F.3d 1352 (Fed.
  Cir. 2004) (J. Rader JJ. Dyk and Prost) p.
  206
• Preferred embodiment does not alone undermine
  customary meaning and scope of the claim language

80
Claim Construction

• Eolas Techs. v. Microsoft, 399 F.3d 1325 (Fed.
  Cir. 2005)(J. Rader JJ. Friedman and Plager)
  p. 208
• Absent a Disclaimer, Claims Are Not Limited to
  the Embodiment Disclosed in the Specification
• Drawn to a distributed hypermedia method -
  allowed a user to operate a web browser in an
  interactive environment
• Claims executable application
• D Ct any computer code that is launched
  includes DLLs
• Microsoft - spec described only standalone
  programs
• Fed. Cir. no clear disclaimer embodiments in
  spec do not limit broader claim language

81
Claim Construction

• Gemstar-TV Guide Intl v. ITC, 383 F.3d 1352
  (Fed. Cir. 2004)(J. Linn and J. Clevenger) p.
  210
• Statement in Specification that innovative
  cursor is required Does Not Limit Claim to
  Such a Cursor
• Interactive program guides
• Claims visual identification
• Spec an innovative cursor is required
  .
• ITC - innovative cursor was required ltd
  visual identification to that cursor
• Fed. Cir. - error Spec simply described
  advantages of innovative cursor

82
Claim Construction

• NTP, Inc. v. Research In Motion, Ltd., ___ F.3d
  ___ (Fed. Cir. 2005)(J. Linn JJ. Michel and
  Schall) p. 211 (new opinion this portion
  unchanged)
• Statement in Specification that electronic mail
  system is basically a Wireline System Together
  With Drawing Figure Illustrating Wireless Link
  Indicates System May Be Wireless
• Claims electronic mail system
• D. Ct. - willful infringement
• RIM - electronic mail system should be limited
  to wireline sys
• Fed. Cir. disagreed
• Spec basically a wireline system dwg showed
  wireless link
• Fed Cir basically means could include wireless

83
Claim Construction

• Playtex Prods., Inc. v. Proctor Gamble Co., 400
  F.3d 901 (Fed. Cir. 2005)(J. Gajarsa JJ. Lourie
  and Linn) p. 213
• Substantially is a Descriptive Term Commonly
  Used in Patent Claims to Avoid a Strict Numerical
  Boundary to the Specified Parameter
• Asyst Techs. v. Emtrak, Inc., 402 F.3d 1188 (Fed.
  Cir. 2005)(J. Bryson CJ. Michel and J. Newman)
  p. 215
• The Phrase mounted on Given its Ordinary
  Meaning a Conclusory Expert Opinion Does not
  Override Ordinary Meaning

84
Claim Construction

• Cases generally emphasizing specification

85
Claim ConstructionLimited by Specification

• Metabolite Labs, Inc. v. Lab. Corp. of Am.
  Holdings, 370 F.3d 1354 (Fed. Cir. 2004)(J. Rader
  SJ. Friedman, dissenting-in-part
  concurring-in-part J. Schall) p. 252
• Reading Claim in the context of the
  Specification May Result in a Broader
  Construction Than Warranted by the Claim Language
  
• Methods of detecting B vitamin deficiency
• correlating an elevated level of   
  homocysteine    with deficiency of cobalamin
  or folate.
• Panel Majority correlating means relating
  homocysteine levels to presence or absence of a
  vitamin deficiency
• J. Schall dissenting panels construction
  expands the scope of claim 13 beyond the actual
  words of the claim.
• Claim limited to elevated levels 80-84 of
  tests shows unelevated levels damages should
  be reassessed.

86
Claim ConstructionLimited by Specification

• Irdeto Access v. Echostar, 383 F.3d 1295 (Fed.
  Cir. 2005)(J. Michel JJ. Newman and Bryson)
  p. 254
• Where a Disputed Term Lacks an Accepted Meaning
  in the Art, There is no Heavy Presumption of
  Ordinary Meaning
• Method of controlling broadcast of enciphered
  info using service keys group keys box
  keys
• ? whether group keys included less than all
  subscribers
• Terms had no accepted meaning in the art
• Having conceded that the key modifiers have no
  accepted meaning in the art, the applicant
  expressly directed the public to the
  specification to discern that meaning and thus
  measure the scope of the claimed invention. And
  while the specification does not contain any
  statements of explicit disavowal or words of
  manifest exclusion, it repeatedly, consistently,
  and exclusively uses group to denote fewer than
  all subscribers, manifesting the patentees clear
  intent to so limit the term.

87
Claim ConstructionLimited by Specification

• AstraZeneca AB v. Mutual Pharms. Co., 384 F.3d
  1333 (Fed. Cir. 2004)(J. Michel SJ. Archer and
  J. Bryson) p. 258
• Specification May Always be Consulted to Confirm
  Construction
• AZ 2 patents - felodipine - PLENDIL - treating
  hypertension
• Mutual ANDA generic felodipine
• a solution or dispersion of an effective amount
  of the active compound in a semi-solid or liquid
  nonionic solubilizer
• Artisans - understand - solubilizer - 3 types
  of chemicals (1) surface active agents (also
  known as surfactants), (2) co-solvents, and (3)
  complexation agents.
• Mutual - solubilizer per spec - only surfactants

88
Claim ConstructionLimited by Specification