Puja Detjen, Partner

Publications & Media

Federal Circuit Decisions for Week Ending April 19, 2013

Capital Machine Company, Inc. v. Miller Veneers, Inc., No. 2012-1288 (April 15, 2013) (nonprecedential) (3-0) Patent Nos. 5,562,137, 5,694,995, 5,701,938, 5,678,619, 5,819,828, and 7,395,843

Key point:

  • Statements made during prosecution seeking to overcome anticipation rejections by arguing that the invention, unlike a reference, is directed to tapered flitches, even with respect to claims that recite “a flitch,” are a clear and unmistakable disclaimer of untapered flitches.

Bayer Healthcare Pharmaceuticals, Inc. v. Watson Pharmaceuticals, Inc., No. 2012-1397, 1398, 1400 and Bayer Schering Pharma AG v. Lupin, LTD, No. 2012-1424 (April 16, 2013) (precedential) (3-0) Patent No. RE37,564

Key points:

  • A patent is invalid when references not only illuminate a known problem but expressly propose the claimed solution.
  • The prior art’s direct recommendation to use dosing regimens to minimize the risks of escape ovulation would have motivated one of ordinary skill in the art to implement a shortened pill-free period for use with known low-dose contraceptives.

Speedtrack, Inc. v. Endeca Technologies, Inc., No. 2012-1319 (April 16, 2013) (nonprecedential) (3-0) Patent No. 5,544,360

Key points:

  • References to extrinsic evidence need not be considered when intrinsic evidence provides sufficient guidance in construing a claim term.
  • Parties may modify arguments on summary judgment in view of reexamination proceedings without necessarily being “clearly inconsistent” so as to present a basis for judicial estoppel.

Biogen Idec, Inc. v. Glaxosmithkline LLC, No. 2012-1120 (April 16, 2013) (precedential) (2-1) Patent No. 7,682,612

Key point:

  • Prosecution history disclaimer overcomes the presumption of plain and ordinary meaning when applicants clearly limit their invention to what the examiner believed applicants had enabled.

K-Tech Telecommunications, Inc. v. Time Warner Cable, Inc., No. 2012-1425 and K-Tech Telecommunications Inc. v. DirecTV, No. 2012-1446 (April 18, 2013) (precedential) (3-0) Patent Nos. 6,785,903, 7,487,533, 7,761,893, and 7,984,469

Key points:

  • A defendant cannot shield itself from a complaint for direct infringement by operating in such secrecy that filing of a complaint itself is impossible.
  • Form 18 does not require a patent holder to identify an accused device by name or a specific method.

Aspex Eyewear, Inc. v. Zenni Optical LLC., No. 2012-1318 (April 19, 2013) (precedential) (3-0) Patent Nos. 5,737,054, 6,012,811, and 6,092,896

Key point:

  • A party is collaterally estopped from relitigating infringement against a second defendant for a product that is materially indistinguishable from a product of a first defendant, when the party had a full and fair opportunity to litigate infringement against the first defendant, even when the party selects additional claims for litigation and additional terms for construction.

Lazare Kaplan International, Inc. v. Photoscribe Technologies, Inc., No. 2012-1247 (April 19, 2013) (precedential) (2-1) Patent No. 6,476,351

Key points:

  • On remand, a district court may not reopen a prior final judgment regarding patent validity, not appealed by either party, based on a claim construction modified by the Federal Circuit.
  • Relief under Rule 60(b) is not a substitute for cross-appeal.