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SPOTLIGHT: ERICSSON INC., ET AL. V. HARRIS CORP., ET AL. It’s now understood that the Festo presumption against resort to the doctrine of equivalents applies only to claim limitations that were narrowly amended during prosecution. Hence, any analysis of prosecution history estoppel begins by determining whether a claim limitation was, in fact, narrowly amended. But what exactly is a “claim limitation” — the entire claim clause or each subpart? For example, if a claim describes “a red metallic gear,” is that one or three limitations? If the claim is amended to describe “a red ferrous-metallic gear,” are equivalents in different colors now precluded? The subject matter of the amendment addresses only the material, not the color. Should that save the patentee’s ability to assert infringement for a blue ferrous-metallic gear and make Festo inapplicable? On Dec. 9, 2003, the U.S. Court of Appeals for the Federal Circuit handed down a decision seemingly holding that amendment-based prosecution history estoppel applies only to individual limitations of a claim clause. In Ericsson Inc., et al. v. Harris Corp., et al., 352 F.3d 1369, the court ruled that an amendment to one part of a claim clause did not establish prosecution history estoppel for another part where the other part was not amended and the subject matter of the amendment did not relate to it. (And thus, the court reversed a grant of judgment as a matter of law for the alleged infringer, Harris.) Ericsson’s patent described an apparatus for supplying power to a telephone. A claim clause recited operational aspects of a control signal and its relation to a speech signal amplifier. One part of the clause stated that the amplifier “only suppl[ies] power” when the receiver is off its cradle. Another part said that, at some point in its operation, the control signal effectively disconnects the amplifier. During prosecution, the latter part was amended to state that the control signal disables the amplifier. The Federal Circuit held that no prosecution history estoppel applied to the part of the claim clause concerning when the amplifier supplies power. Judge Alan Lourie, joined by Chief Judge H. Robert Mayer, explained that Festo was not implicated because the “only suppl[ies] power” limitation had never been amended. Dissenting in part, Judge Pauline Newman wrote that the panel should have treated the entire claim clause as one limitation and then considered whether the foreseeability or tangentialness prong of the Festo test would have shown that the presumption of an absolute bar had been rebutted. In Ericsson, however, there was a greater difference in subject matter between the two parts of the clause than in the “red ferrous-metallic” example. Thus, the definitive answer as to whether the panel’s ruling in Ericsson or Judge Newman’s suggested use of the Festo foreseeability or tangentialness test should apply to such a short claim clause will have to await future cases. Douglas Cawley of the Dallas office of McKool Smith represented Ericsson. Henry Bunsow of the San Francisco office of Howrey Simon Arnold & White argued for Harris. THE OTHER NINE CASES Phonometrics Inc. v. Westin Hotel Co. 350 F.3d 1242 Decided Nov. 26, 2003 The Federal Circuit affirmed the award of attorney fees based on bad-faith pursuit of an infringement action. Phonometrics had sued several hotels for allegedly infringing a patent on a cost computer/ recorder for long-distance calls. The fee award was warranted because Phonometrics continued to press its claim against Westin after the Federal Circuit had handed down a claim construction of the same patent in a nonprecedential decision in another case, and Phonometrics had made no viable argument to show infringement under that claim construction. Judge Paul Michel’s opinion was joined by Judge Randall Rader. Judge Pauline Newman dissented. For appellant: John Sutton, San Francisco. For appellee: Nicholas Coch, Kramer Levin Naftalis & Frankel, New York. Ranbaxy Pharmaceuticals Inc., et al. v. Apotex Inc. 350 F.3d 1235 Decided Nov. 26, 2003 The Federal Circuit affirmed the District Court’s denial of a preliminary injunction because the patentee failed to show a reasonable likelihood of success on the merits of its infringement claim. Apotex’s action in canceling an independent claim that had been rejected over prior art and then rewriting certain dependent claims in independent form was a narrowing amendment that, under Festo, created a presumption of prosecution history estoppel for purposes of the doctrine of equivalents. Chief Judge H. Robert Mayer’s opinion was joined by Judges Raymond Clevenger and William Bryson. For appellees: Darrell Olson, Knobbe, Martens, Olson & Bear, Irvine, Calif. For appellant: Scott Feder, Lord, Bissell & Brook, Chicago. Novo Industries, L.P. v. Micro Molds Corp. 350 F.3d 1348 Decided Dec. 5, 2003 The Federal Circuit held that the District Court had erred in correcting a patent claim when it construed “a” to mean “and.” While it was clear that the claim had an error, it was not clear how the error should be corrected. The patentee proffered two other ways to do it, and the prosecution history showed that the addition of a limitation including the disputed language had significance in overcoming a prior-art rejection. Under these circumstances, the claim was insolubly ambiguous, and thus invalid for indefiniteness. Judge Timothy Dyk’s opinion was joined by Judges Raymond Clevenger and Arthur Gajarsa. For cross-appellant: James Riley, Sonnenschein Nath & Rosenthal, Kansas City, Mo. For appellant: Michael Cesarano, Akerman Senterfitt, Miami. Sulzer Textil A.G., et al. v. Picanol N.V. ___ F.3d ____ Decided Dec. 9, 2003; reissued Feb. 17, 2004 The Federal Circuit held that, where a District Court has ruled on construction of disputed claims and where the parties follow that ruling during trial, the court must give a jury instruction on the ruling and on the jury’s obligation to adopt it. The trial court here failed to inform the jury of its claim construction. However, the error was not prejudicial to the plaintiff. Judge Richard Linn’s opinion was joined by Judges Alan Lourie and Arthur Gajarsa. For appellants: K.T. Cherian, Townsend & Townsend and Crew, San Francisco. For cross-appellant: John Rowley, Holland & Knight, McLean, Va. Ulead Systems Inc., et al. v. Lex Computer & Management Corp. 351 F.3d 1139 Decided Dec. 9, 2003 The Federal Circuit held that its traditional standard for inequitable conduct is applicable to proceedings over patent maintenance fees — and that a threshold determination of materiality and intent, and a balancing of the two, are required. A small company’s grant of a nonexclusive license to a large company disqualified it from claiming small-entity status and paying reduced fees. But summary judgment of inequitable conduct was improper because the lower court failed to give the patentee all reasonable inferences in its favor regarding the issue of intent. Judge Timothy Dyk’s opinion was joined by Judge Sharon Prost. Judge Pauline Newman concurred in part and dissented in part. For cross-appellants: Kenneth Wilton, Small Larkin, Los Angeles. For cross-claimant-appellant: William Brutocao, Sheldon & Mak, Pasadena, Calif. Golight Inc. v. Wal-Mart Stores Inc. 355 F.3d 1327 Decided Jan. 20, 2004 The Federal Circuit affirmed a damage award based on a reasonable royalty that amounted to 50 percent of the patentee’s incremental profits, even though the award was allegedly almost four times the accused infringer’s forecasted profits. Wal-Mart presented sparse testimony on its own costs, and no expert testimony to refute the testimony of the patentee’s damage expert. Therefore it failed to show that the District Court had clearly erred. The circuit noted, “There is no rule that a royalty be no higher than the infringer’s net profit margin.” Judge Sharon Prost’s opinion was joined by Judge Alvin Schall. Senior Judge Glenn Archer Jr. dissented in part. For appellee: David DeBruin, Michael Best & Friedrich, Milwaukee, Wis. For appellant: William Coston, Venable, Washington, D.C. Noelle v. Lederman, et al. 355 F.3d 1343 Decided Jan. 20, 2004 The Federal Circuit affirmed the Board of Patent Appeals and Interferences’ finding of no interference-in-fact. The senior party’s claims were directed to a human antibody; the junior party’s claims were directed to a mouse antibody. Due to unpredictability in the DNA art, substantial evidence supported the board’s determination that one of skill in the art would not have a reasonable expectation of success in using the human antibody to produce the mouse antibody, and vice versa. Therefore, the claims did not meet the two-way test for finding an interference. Judge Arthur Gajarsa’s opinion was joined by Judges Raymond Clevenger and William Bryson. For appellant: E. Anthony Figg, Rothwell, Figg, Ernst & Manbeck, Washington, D.C. For appellees: James Haley, Fish & Neave, New York. PSC Computer Products Inc. v. Foxconn International Inc., et al. 355 F.3d 1353 Decided Jan. 20, 2004 Affirming summary judgment of no infringement, the Federal Circuit expanded on its 2002 en banc decision in Johnson & Johnston Associates v. R.E. Service Co. Here the accused product, which used a plastic clip, did not infringe under the doctrine of equivalents a claim requiring a “metal strap” because the patentee had dedicated to the public plastic clips where it disclosed in the specification that plastic clips could be substituted for the metal strap, but did not affirmatively claim plastic clips. Judge Arthur Gajarsa’s opinion was joined by Chief Judge H. Robert Mayer and Judge Raymond Clevenger. For appellant: Paul Adams, Peacock, Myers & Adams, Albuquerque, N.M. For appellees: David Reynolds, Lewis Brisbois Bisgaard & Smith, Los Angeles. The Toro Co. v. Deere & Co. 355 F.3d 1313 Decided Jan 20, 2004 The Federal Circuit affirmed summary judgment of no infringement on claims in two product patents reciting a means-plus-function limitation that required, as a corresponding structure, a mechanical cam. The District Court properly held that, even though an electric solenoid is interchangeable with the mechanical cam as to function, it is not structurally equivalent because no reasonable fact-finder could find that the solenoid operated in the same way as the cam. Judge Paul Michel’s opinion was joined by Judges Alan Lourie and Richard Linn. For appellant: Earl Reiland, Merchant & Gould, Minneapolis. For appellant: Keith Rockey, Bell, Boyd & Lloyd, Chicago. Robert A. Matthews Jr. and Vincent P. Kovalick are partners in the IP firm of Finnegan, Henderson, Farabow, Garrett & Dunner, resident in the firm’s Reston, Va., and D.C. offices, respectively. They can be reached at [email protected] and [email protected].

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