As part of our ongoing effort to keep clients and friends informed of important legal updates, we are pleased to provide the L&A Federal Circuit Review, a monthly publication highlighting recent Federal Circuit and Supreme Court decisions. Each monthly review summarizes a few decisions and the key takeaways. Please contact your lead L&A attorney for additional details.
Gilead Sciences, Inc. v. Lee, No. 14-1159 – 2015-02-26 (Patent Term Adjustment)
In Gilead, the Federal Circuit held that the PTO correctly calculated patent term adjustment (PTA) for Gilead’s patent. During prosecution, Gilead responded to a restriction requirement by selecting one of the four groups of inventions for examination. While waiting for the PTO to issue a first office action on the merits, Gilead filed a supplemental IDS that disclosed two other co-pending Gilead patent applications. At the conclusion of prosecution, the Patent Office reduced Gilead’s PTA by 57 days of “applicant delay” for the period between Gilead’s initial reply to the restriction requirement and its filing of a supplemental IDS. Gilead challenged the assessment of applicant delay, arguing that because prosecution had not yet begun, on the merits, no actual delay occurred as a result of filing the supplemental IDS.
The Federal Circuit affirmed the PTO’s assessment of applicant delay, finding that the PTA statute – 35 U.S.C.§ 154 – requires a reduction in PTA for “the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application.” The Court further reasoned that “nothing in the plain language of the statute suggests reasonableness requires the applicant’s behavior to have an effect on when the prosecution ends.”
Key Takeaway: After Gilead, patent applicants should be just as mindful of potential applicant delay before prosecution on the merits, as it would be after prosecution on the merits begins. Even conduct that does not cause actual delay may reduce patent term adjustment.
Pacing Technologies, LLC v. Garmin Int’l, Inc., No. 14-1396 – 2015-02-18 (Claim Construction)
In Pacing Technologies, the Federal Circuit affirmed the district court’s summary judgment of no patent infringement. The patent-in-suit covers a system for pacing users during exercise activities like running or walking. In particular, the patent describes a system for aiding a user’s pacing by providing the user with a tempo (for example, the beat of a song or flashes of light) corresponding to the user’s desired pace. The accused Garmin devices display intervals of a workout during operation, by, for example, counting down the time for which the user intends to maintain a particular pace. The Garmin devices do not play music or output a beat corresponding to the user’s desired or actual pace.
The Federal Circuit affirmed the district court’s ruling that the claim preamble was a substantive claim limitation. The Court reasoned that “[w]hen limitations in the body of the claim … derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Here, the term “repetitive motion pacing system” in the preamble of the independent claim provided antecedent basis for the same term that was recited as a positive limitation in the body of a dependent claim. Furthermore, the specification clearly claimed that all of the “objects and features of the present invention are accomplished…,by a repetitive motion pacing system that includes … a … playback device adapted to producing the sensible tempo.” Therefore, the Federal Circuit affirmed the construction requiring a “repetitive motion pacing system,” which was lacking from the accused Garmin products.
Key Takeaway: Claim preambles may become limiting where they are recited elsewhere within the claim or in a dependent claim. If an applicant does not intend to make a claim preamble substantive, care should be taken to ensure that it does not appear again within the claim or in any dependent claims.
Papst Licensing GmbH & Co. KG v. Fujifilm Corp., No. 14-1110 – 2015-02-02 (Claim Construction)
In Papst, the Federal Circuit vacated a district court’s summary judgment ruling of no infringement because of an incorrect claim construction. In vacating the district court’s claim construction, the Federal Circuit relied entirely on the intrinsic evidence, including the claims and the specification, finding that “the intrinsic evidence—the claims, the specification, and the prosecution history—provide the full record necessary for claims construction.” Because the Court limited its analysis to the intrinsic record, the district court’s judgment was subject to “de novo” review, which allowed the Court to reach a different interpretation than the district court, based on the same evidence. The Federal Circuit’s decision in Papst tracks the Supreme Court’s recent holding in Teva v. Sandoz, where the Supreme Court held that decisions based on intrinsic evidence are subject to a de novo review on appeal, whereas decisions based on extrinsic evidence are subject to review only for “clear error.”
Key Takeaway: After the Supreme Court’s decision in Teva v. Sandoz, the standard of review applied by the Federal Circuit in deciding claim construction issues will have a significant impact on the outcome of cases.
In Bard, the Federal Circuit affirmed the district court’s determination of willful infringement in a long-running dispute between the parties. Gore argued that its infringement was not willful because its invalidity argument, based on incorrect inventorship, was reasonable. The Federal Circuit disagreed. Gore’s incorrect inventorship theory had been previously rejected in an interference proceeding before the Patent Office and affirmed by the Federal Circuit. In this case, the Federal Circuit reasoned that because Gore had not introduced any new evidence relating to the inventorship issue, Gore had acted despite “an objectively high likelihood that its actions constituted infringement of a valid patent” and therefore had willfully infringed the patents-in-suit.
Key Takeaway: Litigants should be careful when re-asserting an invalidity or non-infringement theory that has already been rejected in an earlier proceeding. Unless new evidence is introduced to further support the defense, courts may deem such defenses to be unreasonable and subject to a finding of willfulness.