EDITED BY VINCE KOVALICK

This publication brings you a synopsis of patent cases decided last month by the United States Court of Appeals for the Federal Circuit based on slip opinions received from the court. You can review anddownload the full text of each opinion by visiting our website at www.finnegan.com

Washington, DC202-408-4000

Palo Alto650-849-6600

Atlanta404-653-6400

Cambridge617-452-1600

Tokyo011-813-3431-6943

Brussels011-322-646-0353

HAS THE FEDERAL CIRCUIT “TORPEDOED” SUBMARINE PATENTS?Equitable doctrine of prosecution laches may beapplied to bar enforcement of patent claims thathave issued after an unreasonable and unexplaineddelay in prosecution, even though the applicantcomplied with pertinent statutes and rules. SymbolTechs., Inc. v. Lemelson Med., Educ. & ResearchFound., L.P., No. 00-1583 (Fed. Cir. Jan. 24, 2002) ...................................................................1

DISTRICT COURT EXCEEDED ITS AUTHORITY INSHORTENING THIRTY-MONTH STAY UNDERANDADistrict court has no authority in an infringementaction because of allegedly improper conductbefore the FDA. Andrx Pharms., Inc. v. Biovail Corp., No. 01-1650 (Fed. Cir. Jan. 17, 2002) ........1

CLAIM LOSES ORDINARY MEANING DURINGPROSECUTION HISTORYWhere the prosecution history requires a claim construction that excludes some but not all of thepreferred embodiments, such a construction is permissible and meets the standard of “highly persuasive evidentiary support.” Rheox, Inc. v.Entact, Inc., No. 01-1001 (Fed. Cir. Jan. 8, 2002) ...................................................................2

“COMMON SENSE” AND “COMMON KNOWLEDGE” ARE INSUFFICIENT TO UPHOLDOBVIOUSNESS REJECTIONBoard’s findings must extend to all material factsand must be documented on the record, lest thehaze of so-called expertise acquire insulation fromaccountability. In re Sang-Su Lee, No. 00-1158(Fed. Cir. Jan. 18, 2002) .......................................3

FAILURE TO COPY CLAIM WITHIN ONE YEAR OFPATENT GRANT BARS INTERFERENCEClaim added late to provoke interference includedmaterial limitations different from the originalclaims. In re Berger, No. 01-1129 (Fed. Cir. Jan. 9, 2002) ........................................................4

COURT AFFIRMS ORDER REQUIRING GRADUATESTUDENT TO ASSIGN RIGHTS TO UNIVERSITYStudent’s testimony as to facts concerning inven-tion lacks credibility given substantial contrary evi-dence. University of W. Va. v. VanVoorhies, No. 00-1440 (Fed. Cir. Jan. 30, 2002) ..................5

PLAIN MEANING AND PROSECUTION HISTORYLIMIT LITERAL SCOPE OF CLAIM AND ESTOPINFRINGEMENTPatentees description that stressed critical claimterm and relied on that term to distinguish prior art estops infringement. Talbert Fuel Sys. PatentsCo. v. Unocal Corp., No. 99-1421 (Fed. Cir. Jan. 8,2002) ...................................................................6

FEDERAL CIRCUIT UPHOLDS PRELIMINARYINJUNCTION AGAINST DESIGNERSMinor refinements over patentees’ design conceptwere not likely to constitute a separate invention;therefore, validity and infringement likely. Hoop v. Hoop, No. 01-1288 (Fed. Cir. Jan. 30, 2002) ...................................................................7

EVIDENCE OF EXPERIMENTAL USE “SINKS”SUMMARY JUDGMENT OF INVALIDITY ONFLOATING DOCK PATENTExperimental use criteria are not at odds with the“ready for patenting” prong of the Pfaff on-sale bar test. EZ Dock, Inc. v. Schafer Sys., Inc., No. 00-1443 (Fed. Cir. Jan. 15, 2002) ..................8

DISMISSAL WITHOUT PREJUDICE NOT ANABUSE OF DISCRETIONOrder dismissing a complaint and counterclaims isappealable by defendant as a final order, evenwhere the dismissal was without prejudice. H.R.Techs., Inc. v. Astechnologies, Inc., No. 01-1121(Fed. Cir. Jan. 11, 2002) .......................................8

RULE 11 PREFILING INVESTIGATION DETERMINED BY A REASONABLENESS STANDARDCourt reverses sanction of attorney fees, concludingthat attorneys’ prefiling claim construction was notfrivolous. Antonious v. Spalding & Evenflo Cos., No.01-1088 (Fed. Cir. Jan. 7, 2002) ...........................9

COURT VACATES AWARD OF PRIORITY ININTERFERENCE PROCEEDINGBoard failed to properly consider evidence that senior party conceived of invention prior to juniorparty’s reduction to practice and diligently pursuedthe invention from the time of junior party’s reduction to practice through senior party’s filingdate. Brown v. Barbacid, No. 00-1590 (Fed. Cir. Jan. 11, 2002) ....................................................10

FE

BR

UA

RY

20

02

The Federal CircuitLast month at

Mon

th at a G

lance

Has the Federal Circuit “Torpedoed”Submarine Patents?

Vince Kovalick

[Judges: Mayer (author), Clevenger, andNewman (dissenting)]

In Symbol Technologies, Inc. v. Lemelson Medical,Education & Research Foundation, L.P., No. 00-1583(Fed. Cir. Jan. 24, 2002), the Federal Circuit recog-nized the defense of prosecution laches as a bar toenforcement of patent claims.

Symbol Technologies, Inc. (“Symbol”) brought aDJ action against Lemelson Medical, Education &Research Foundation, L.P. (“Lemelson”) seeking ajudgment that several of Lemelson’s patents areinvalid, unenforceable, and not infringed by Symbolor its customers. The Lemelson patents are direct-ed to what Lemelson calls “machine vision” andautomatic identification technology and allegedlyare entitled to the benefit of the filing date of twoapplications filed in 1954 and 1956.

The district court had dismissed Symbol’s lachesclaims. The sole issue on appeal was whether, as amatter of law, the equitable doctrine of laches maybe applied to bar enforcement of patent claims thatissued after an unreasonable and unexplained delayin prosecution, even though the applicant hadcomplied with pertinent statutes and rules.

Examining the history of this defense, theFederal Circuit concluded that prosecution lachesfinds its origin in two Supreme Court cases:Woodbridge v. United States, 263 U.S. 50 (1923),and Webster Electric Co. v. Splitdorf Electrical Co., 264U.S. 463 (1924). In Woodbridge, the Court firstapplied prosecution laches to render a patent unen-forceable where the patentee failed to explain anine-year delay in requesting the PTO to issue apatent. The patentee requested issuance onlywhen doing so had become pecuniarily valuable. Ayear later, in Webster, the Court held that an unrea-sonable eight-year delay rendered certain claimsunenforceable. For all that time, the patentee sim-ply stood by and awaited developments as industrybegan to use the claimed subject matter. TheFederal Circuit also cited Crown Cork & Seal Co. v.Ferdinand Gutmann Co., 304 U.S. 159 (1938), andGeneral Talking Pictures Corp. v. Western Electric Co.,304 U.S. 175 (1938), as recognizing the existenceof a prosecution laches defense to prevent prejudiceagainst intervening public rights.

The Federal Circuit rejected Lemelson’s argu-ment that prosecution laches is not a defensebecause: (1) Webster and its progeny are limited toclaims arising out of interference actions; (2) the1952 Patent Act forecloses the application of prose-

cution laches; and (3) the Federal Circuit has issuedtwo nonprecedential opinions that reject prosecu-tion laches as a defense. The claims at issue inWebster were not the subject of an interference pro-ceeding, and the Federal Circuit found nothing inthe precedent to suggest that Webster had limitedprosecution laches to cases involving an interfer-ence. Moreover, the Court concluded after review-ing the legislative history and commentary, thatpassage of 35 U.S.C. §§ 120 and 121, entitling con-tinuation and divisional applications, in the 1952Patent Act, did not abrogate the defense of prose-cution laches.

As to the nonprecedential cases cited byLemelson, subscribing to the reasoning of the NinthCircuit in Hart v. Massanari, 266 F.3d 1155 (9th Cir.2001), the Federal Circuit confirmed its practice ofissuing nonprecedential decisions and declined toconsider any cited by Lemelson.

Having reversed the judgment, the FederalCircuit remanded the case to the U.S. District Courtfor the District of Nevada, but provided no guid-ance or instructions on how to apply prosecutionlaches.

Judge Newman dissented, agreeing with the dis-trict court that it should not intervene in equity toregulate what Congress has not. The majority, sheconcluded, breaks the long-standing rule that whenthe statutory requirements for continuing applica-tions are met, patents are not subject to attack onnonstatutory grounds. Judge Newman disagreedthat Woodbridge and Webster established the princi-ple of laches in patent prosecution and concludedthat any doubt about the reach of those cases wasresolved in the 1952 Patent Act that codified therules for continuing and divisional applications.

GATT, she reasoned, had changed the laws con-cerning the lifetime of a patent to address the issueof “submarine” patents. It was not, however, madeapplicable to existing patents or to pending appli-cations filed before June 8, 1995. She concludedthat the majority’s ruling would achieve exactly thateffect retroactively even though that was rejectedby Congress.

District Court Exceeded Its Authorityin Shortening Thirty-Month StayUnder ANDA

Maria T. Bautista

[Judges: Dyk (author), Bryson, and Linn]

In Andrx Pharmaceuticals, Inc. v. Biovail Corp., No.01-1650 (Fed. Cir. Jan. 17, 2002), the FederalCircuit vacated and remanded a lower court’s order

page 01

L A S T M O N T H A T T H E F E D E R A L C I R C U I T

F I N N E G A N H E N D E R S O N F A R A B O W G A R R E T T D U N N E R L L P.

2 0 0 2 F E B R U A R Y

02 page

F I N N E G A N H E N D E R S O N F A R A B O W G A R R E T T D U N N E R L L P.

(1) shortening the statutory thirty-month delay ofFDA approval of Andrx Pharmaceuticals, Inc.’s(“Andrx”) Abbreviated New Drug Application(“ANDA”), and (2) ordering that the FDA approvethe ANDA.

Under the Hatch-Waxman Amendments, a pio-neer drug manufacturer having an approved NewDrug Application (“NDA”) must notify the FDA ofall patents claiming the drug covered by the NDA.The FDA lists these patents in the “Orange Book.”

A generic drug manufacturer can submit anANDA, as opposed to a full NDA, if the manufactur-er can show the generic drug’s bioequivalence withan FDA-approved drug that had previously satisfiedsafety and efficacy requirements. Concerning theOrange Book, however, the generic drug manufac-turer must certify that: (1) patent information hasnot been submitted to the FDA; (2) any such patenthas expired; (3) the patent will expire on a certaindate; or (4) such patent is invalid or will not beinfringed by the manufacture, use, or sale of thenew drug for which the application is submitted(“paragraph I, II, III, and IV certifications”). 21U.S.C. § 355(j)(2)(A)(vii)(I-IV). After filing a para-graph IV certification, the generic drug manufactur-er must notify the patentee and NDA holder andexplain why the patent is not infringed, invalid, orunenforceable. Approval of the ANDA is effectiveunless the patentee sues for patent infringementwithin forty-five days of the notice. If such a suit isfiled, the FDA must stay approval of the ANDA untilafter expiration of the patent, resolution of the suit,or the passing of thirty months after the notice.The court overseeing the suit can order a shorter orlonger stay if “either party to the action fail[s] toreasonably cooperate in expediting the action. . . .”21 U.S.C. § 355(j)(5)(B)(iii).

Biovail Corporation (“Biovail”) owns U.S. PatentNo. 5,529,791 (“the ‘791 patent”) and holds anNDA directed to “Tiazac,” an antihypertension drugwith diltiazem hydrochloride as the active ingredi-ent. Andrx subsequently filed an ANDA and certi-fied that Andrx did not infringe the ‘791 patent andthat the ‘791 patent was invalid. Biovail timely fileda patent infringement suit against Andrx, thus trig-gering the thirty-month stay of approval of Andrx’sANDA.

Biovail also holds an exclusive license for U.S.Patent No. 6,162,463 (“the ‘463 patent”), whichclaims an extended release formulation of diltiazem.Shortly after the ‘463 patent was issued, Biovailchanged its manufacturing process for Tiazac inaccordance with the ‘463 patent claims and assert-ed to the FDA that this change did not affect thesafety and efficacy of Tiazac. The FDA requiredBiovail to supplement its current NDA, which theFDA would review prior to allowing Biovail to sell

the drug prepared by the new manufacturingprocess.

Upon the listing of the ‘463 patent in theOrange Book, the FDA notified Andrx that it wouldnot approve Andrx’s ANDA. Andrx then suedBiovail, seeking a DJ that it did not infringe the ‘463patent. Andrx further asserted that Biovail shouldnot be granted a second thirty-month stay for the‘463 patent, after obtaining a first thirty-month stayfor the ‘791 patent. The district court granted SJ infavor of Andrx, stating that by changing its manu-facturing process with regard to the ‘463 patent,Biovail had impeded or delayed expeditious resolu-tion of the patent infringement suit. The districtcourt ordered that the statutory stay end onSeptember 27, 2001, as opposed to August 8,2003, when the second statutory stay would haveended. The district court also ordered the FDA toapprove Andrx’s ANDA.

On appeal, the Federal Circuit held that the dis-trict court had erred in shortening the stay due toBiovail’s conduct, based on an overly broad readingof the statute. The Court noted that a districtcourt’s authority to shorten the stay must be basedon actions that delay resolution of the patentinfringement suit. Biovail’s actions, however, weredirected to obtaining approval of its NDA beforethe FDA, which did not come within the realm ofdelaying patent suit resolution. Thus, the FederalCircuit found that the district court had exceededits authority to shorten the thirty-month stay basedon Biovail’s allegedly improper conduct before theFDA.

With regard to the district court’s order that theFDA approve Andrx’s ANDA, the Court found thatAndrx did not bring a claim under theAdministrative Procedure Act (“APA”) for judicialreview of the FDA’s actions. Andrx had filed anamended complaint asserting an APA claim, but thedistrict court found that Andrx’s complaint failed toallege any wrongdoing by the FDA and dismissedthe FDA as a party. Because the Government wasno longer a party, the Federal Circuit found the APAclaim invalid and vacated the district court’s order.

Claim Loses Ordinary MeaningDuring Prosecution History

Anthony A. Hartmann

[Judges: Gajarsa (author), Schall, and Linn]

In Rheox, Inc. v. Entact, Inc., No. 01-1001 (Fed.Cir. Jan. 8, 2002), the Federal Circuit affirmed a dis-trict court’s grant of SJ of noninfringement by

Entact, Inc. (“Entact”) of U.S. Patent No. 5,162,600(“the ‘600 patent”), assigned to Rheox, Inc.(“Rheox”).

The claims of the ‘600 patent are directed tomethods of remediating lead from lead-contaminat-ed soil by the application of a composition primarilycomprising “calcium orthophosphate.” Rheox filedsuit against Entact, alleging infringement of at leastclaim 1 of the ‘600 patent by Entact’s use of triplesuperphosphate (“TSP”) to remediate lead-contami-nated soil. It was undisputed that TSP is primarilymonocalcium orthophosphate.

The district court recognized that the ordinarymeaning of the term “calcium orthophosphate”encompasses compounds comprising Ca2+ cationsand PO4

3- anions, such as monocalcium orthophos-phate, dicalcium orthophosphate, and tricalciumdiorthophosphate. However, upon considering theprosecution history, the district court determinedthat Rheox had excluded monocalcium orthophos-phate and, thus, TSP from the claims.

Specifically, when Rheox filed its application,claim 1 recited “an agent selected from the groupconsisting of calcium, zinc, magnesium or ammoni-um phosphate. . . .” Dependent claim 3 recited“wherein said calcium, zinc, magnesium or ammo-nium phosphate compounds are selected from thegroup consisting of calcium orthophosphate, . . .dicalcium orthophosphate, . . . monocalciumorthophosphate, . . . tricalcium diorthophos-phate. . . .” In response to an obviousness rejec-tion, wherein the reference taught water-solublephosphate treatment agents, Rheox amended claim1 to recite “consisting essentially of calciumorthophosphate” and cancelled claim 3.

In addition, Rheox asserted that the amend-ments were made to distinguish between thewater-soluble compounds of the reference and thesubstantially water-insoluble compounds of theinvention. Rheox asserted that the claimed com-pounds had a solubility of 0.002g/100mL, whichthe district court had noted was the solubility of tri-calcium orthophosphate, and referred to theclaimed compound when using the formula for tri-calcium orthophosphate. In view of both Rheox’samendment and argument before the PTO, the dis-trict court had held that “calcium orthophosphate”of claim 1 was intended to mean “tricalciumorthophosphate” and to exclude monocalciumorthophosphate and TSP. Accordingly, SJ of nonin-fringement was granted.

On appeal, the Federal Circuit assessed whetherthe patentee had relinquished a particular claimconstruction based on the totality of the prosecu-tion history rather than any individual segments.Rheox argued on appeal that only those com-pounds that are less soluble than the compounds of

the reference were disclaimed. However, the Courtnoted that if that were true, Rheox would neverhave deleted all references to TSP from the claims,particularly since TSP was the preferred embodi-ment. The Court also noted that Rheox had arguedto the PTO that the claimed compounds were thou-sands of times less soluble than the reference when,in fact, TSP was not even three times less soluble.

Accordingly, the Federal Circuit concurred withthe district court’s conclusion that Rheox had dis-claimed both monocalcium orthophosphate andTSP from the claims in order to obtain patentabilityand, thus, affirmed SJ of noninfringement byEntact. The Federal Circuit went further to notethat while claim constructions that exclude pre-ferred embodiments are rare, where the prosecu-tion history requires a claim construction thatexcludes some but not all of the preferred embodi-ments, such a construction is permissible and meetsthe standard of highly persuasive evidentiary sup-port.

“Common Sense” and “CommonKnowledge” Are Insufficient toUphold Obviousness Rejection

Rafael E. Rosado

[Judges: Newman (author), Clevenger, and Dyk]

In In re Sang-Su Lee, No. 00-1158 (Fed. Cir. Jan.18, 2002), the Federal Circuit vacated the Board’sobviousness rejection of Sang-Su Lee’s patent appli-cation, concluding that the Board had failed tomeet the adjudicative standards for review underthe Administrative Procedure Act (“APA”), when itfailed to support its conclusion of obviousnessbased on common knowledge and common senseof one of ordinary skill in the art.

The PTO rejected Lee’s patent application for avideo game on the ground of obviousness, citingthe combination of two references: a prior patentand the “Thunderchopper Helicopter OperationsHandbook.” The Board held that it was not neces-sary to present a source of a teaching, suggestion,or motivation to combine the references and fur-ther stated that the conclusion of obviousness maybe made from common knowledge and commonsense of a person of ordinary skill in the art withoutany specific hint or suggestion in a particular refer-ence. The Board did not explain the commonknowledge and common sense it relied on to com-bine the teachings.

On appeal, the Federal Circuit held that theBoard’s analysis failed to comport with both the

page 03

L A S T M O N T H A T T H E F E D E R A L C I R C U I T

F I N N E G A N H E N D E R S O N F A R A B O W G A R R E T T D U N N E R L L P.

2 0 0 2 F E B R U A R Y

04 page

F I N N E G A N H E N D E R S O N F A R A B O W G A R R E T T D U N N E R L L P.

legal requirements for determination of obviousnessand the APA requirements that the Agency’s tribu-nal set forth the findings and explanations neededfor reasoned decision making. The Court conclud-ed that the Board has an obligation to make thenecessary findings and provide a record showingthe evidence on which the findings are basedaccompanied by the Board’s reasoning in reachingits conclusions. The Court noted that in rejectingLee’s application, neither the Examiner nor theBoard had adequately supported the selection andcombination of the cited references. Specifically, instating that there was no need for a specific hint orsuggestion in a particular reference to support thecombination of references, the Board had omitted arelevant factor required by legal precedent. TheBoard’s attempt to substitute common knowledgeand common sense for that factor was viewed asnothing more than the issuance of a conclusorystatement that did not fulfill the PTO’s obligation toset forth reasoned findings.

In vacating the Board’s decision, the Courtrequired that the PTO articulate and place on therecord any general knowledge relied on to negatepatentability. The failure to do so, the Court stated,was inconsistent with effective administrative proce-dure and effective judicial review. Thus, becausethe Board had failed to articulate its reasoning, theCourt did not have a record on which to decide thefinal question of patentability. Instead, the Courtremanded the case back to the Board to set forthspecific findings.

Failure to Copy Claim Within OneYear of Patent Grant BarsInterference

Christopher T. Kent

[Judges: Linn (author), Newman, and Archer]

In In re Berger, No. 01-1129 (Fed. Cir. Jan. 9,2002), the Federal Circuit affirmed the Board’s deci-sion upholding the Examiner’s rejection of claimsunder 35 U.S.C. §§ 135(b), 102(e), and 112, sec-ond paragraph. The Court held that a claim copiedfor the purpose of provoking an interference mustbe present in the application within one year of thegrant date of the patent with which the interfer-ence is sought.

Berger filed a patent application on September30, 1994, containing claims directed to a beveragecontainer having an indentation on the side wall foraccommodating the lower lip of a consumer inorder to minimize spillage when the consumer

drinks from the container. In an amendment filedJune 2, 1995, Berger added additional claim 7,attempting to provoke an interference with U.S.Patent No. 5,301,830 (“the Muller patent”), grant-ed to Muller on April 12, 1994.

The Examiner issued a final Office Action, reject-ing claim 7 under 35 U.S.C. § 135(b) for not havingbeen copied within a year of the grant date of theMuller patent; rejecting claim 7 under 35 U.S.C.§ 102(e) as being anticipated by Muller; and reject-ing claims 1-4 and 8-20 under 35 U.S.C. § 112,second paragraph, as being indefinite.

In response, Berger simultaneously filed anamendment under 37 C.F.R. § 1.116(a) and anappeal brief to the Board. In the appeal brief,Berger argued that because the originally filedclaims were filed within a year of Muller’s grantdate, later-added claim 7 was also entitled to the fil-ing date as a basis for provoking an interference.Berger also argued that the rejections under § 112,second paragraph, were moot in view of theamendment after final rejection. The Examiner,however, refused to enter the amendment afterfinal rejection, finding that the amendment did notplace the claims in better form for appeal becauseat least several § 112 problems remained and thatthe changes raised new issues. The Examiner alsonoted that the amendment attempted to add addi-tional claims without canceling an equal number offinally rejected claims.

In an attempt to overcome these problems,Berger filed a second amendment after final, whichthe Examiner also refused to enter for similar rea-sons.

In affirming the Examiner, the Board concludedthat new claim 7 was substantially different thanclaims 1-6 and, therefore, was not entitled to theearlier date. With respect to the rejections under§ 112, second paragraph, the Board found thatBerger had failed to contest the rejections becauseBerger had merely argued that they were moot inlight of the amendments after final rejection. TheBoard also found that the Examiner’s decision notto enter the after-final amendments was a properexercise of an examiner’s discretion and was notappealable to the Board.

On appeal, Berger argued that 37 C.F.R.§ 1.601(n) provides that if claims filed within theone-year bar render the copied claim obvious, thenthe copied claim may still provoke an interference.The Federal Circuit, however, rejected this argu-ment, holding that the claims presented within ayear of the patent grant must not differ in any“material limitation” as required under 35 U.S.C.§ 135(b). The Court also concluded that§ 1.601(n) was formulated to define the extent ofinterfering subject matter as between applications

of potentially conflicting parties only after the otherprerequisites for an interference are satisfied.

Applying the standard set forth under § 135(b),the Court affirmed the Board’s finding, concludingthat Berger’s originally filed claims 1-6 did notinclude a material limitation present in copied claim7. The Federal Circuit was not persuaded byBerger’s arguments that the missing material limita-tion of claim 7 was either equivalent or inherent tostructures recited in originally filed claims 1-6.

With respect to the § 102(e) rejection of claim 7,the Federal Circuit affirmed the Board’s decision touphold the Examiner’s rejection because althoughBerger had submitted an affidavit under 37 C.F.R.§ 1.131 in an attempt to swear behind the Mullerpatent, a § 1.131 affidavit cannot be used to swearbehind a U.S. patent claiming the same patentableinvention.

With respect to the rejection of Berger’s claimsunder § 112, second paragraph, the Federal Circuitheld that Berger had effectively waived argument onthis issue by failing to contest the § 112 rejections inhis appeal to the Board. Berger instead had arguedthat the rejections under § 112 would have beenrendered moot had his amendments submitted afterfinal rejection been entered. Since the amendmentswere not entered and Berger had not opposed the§ 112 rejections, the rejections stood.

Finally, responding to Berger’s argument that theExaminer had abused his discretion by refusing toenter the amendments after final rejection, theFederal Circuit agreed with the Board that this issueis not properly reviewed by the Board or the FederalCircuit. The proper avenue for review is by petitionto the Commissioner under 37 C.F.R. § 1.181.

Court Affirms Order RequiringGraduate Student to Assign Rights toUniversity

Christopher W. Day

[Judges: Lourie (author), Rader, and Gajarsa]

In University of West Virginia v. VanVoorhies, No.00-1440 (Fed. Cir. Jan. 30, 2002), the Federal Circuitupheld a district court’s decision to grant SJ to theUniversity of West Virginia’s Board of Trustees(“WVU”), holding that Mr. Kurt VanVoorhiesbreached his duty to assign two U.S. PatentApplications to WVU and requiring execution of anassignment to WVU of those applications and theissued patents based thereon. The Court alsoaffirmed the district court’s decision to grant SJ toWVU over VanVoorhies’s claims of fraud, breach offiduciary duty, breach of contract, and invalid

assignment as well as the district court’s dismissal ofVanVoorhies’s quasi-contract claims and his claimunder the Racketeer Influenced and CorruptOrganizations Act (“RICO”). Additionally, the Courtaffirmed the denial of VanVoorhies’s motions to dis-qualify WVU’s counsel, compel discovery, and vacatethe stay of a consolidated case.

In 1990, VanVoorhies enrolled in graduate schoolat WVU to work with a particular professor, Dr.Smith, and pursue a Ph.D. in engineering. Soonthereafter, VanVoorhies submitted an invention dis-closure form to WVU describing an invention for acontrawound toroidal helical antenna (“the firstinvention”) and listing Smith as a coinventor. Attrial, Smith testified that he had discussed WVU’spatent policy with VanVoorhies before submittingthis invention disclosure. Under this policy, theUniversity owns worldwide right, title, and interestin any invention made at least in part by Universitypersonnel or with substantial use of Universityresources. The policy defined “University personnel”as all full-time and part-time members of the facultyand staff, and all other employees of the University,including graduate and undergraduate students andfellows of the University. The policy also stated thatthe inventor shall cooperate fully with the Universityin all respects, such as in the preparation, filing, andtransfer of rights to any invention covered by thepolicy.

In November 1992, VanVoorhies and Smith, ascoinventors, filed a U.S. Patent Application Serial No.07/992,970 (“the ‘970 application”) to the firstinvention. They also executed a written assignmentof all rights to this invention to WVU. This assign-ment stated that it covered all CIP applications relat-ing to the first invention.

On December 29, 1993, VanVoorhies received hisdoctoral degree from WVU. VanVoorhies assertedthat he then invented a half-wave bifilar contra-wound toroidal helical antenna (“the second inven-tion”) before beginning his work as a postgraduateResearch Professor at WVU on February 1, 1994. Ina letter dated October 5, 1994, however,VanVoorhies, who became a registered patent agentthat same month, requested WVU to file a CIP of thefirst application directed to the second invention.He also forwarded a preliminary invention disclosureto WVU’s patent counsel and urged WVU to obtainpatent protection on the second invention. WVU’spatent counsel then sent VanVoorhies a patent appli-cation with a corresponding declaration and assign-ment, but VanVoorhies did not respond.

In June 1995, WVU filed U.S. Patent ApplicationSerial No. 08/486,340 (“the ‘340 application”)directed to the second invention, even thoughVanVoorhies refused to execute this application.WVU designated the ‘340 application as a CIP appli-

page 05

L A S T M O N T H A T T H E F E D E R A L C I R C U I T

F I N N E G A N H E N D E R S O N F A R A B O W G A R R E T T D U N N E R L L P.

2 0 0 2 F E B R U A R Y

06 page

F I N N E G A N H E N D E R S O N F A R A B O W G A R R E T T D U N N E R L L P.

cation of the first application and listed VanVoorhiesas the sole inventor. In August 1995, however,VanVoorhies filed U.S. Patent Application Serial No.08/514,609 (“the ‘609 application”), which wasdirected to the same subject matter as the secondinvention. Unlike the ‘340 application, the ‘609application was not designated as a CIP of the ‘970application.

In August 1997, WVU brought suit againstVanVoorhies, asserting that he had breached hisduty to assign the second invention to WVU. Inresponse, VanVoorhies filed an extensive array ofcounterclaims, including breach of fiduciary duty,breach of contract, fraud, as well as RICO andimplied contract claims. VanVoorhies also sought adeclaration of invalidity of the assignment of thefirst invention. Before trial, WVU moved for SJ thatVanVoorhies breached his duty to assign the ‘340and the ‘609 applications to WVU. The districtcourt granted SJ, concluding that the ‘340 applica-tion was a CIP of the ‘970 application and, there-fore, subject to the assignment of the first inven-tion.

On appeal, VanVoorhies argued that the districtcourt had erred in granting SJ that he had breachedhis duty to assign the ‘340 and ‘609 applications toWVU. Specifically, VanVoorhies contended thatWVU had improperly designated the ‘340 applica-tion a CIP of the ‘970 application since the secondinvention was an independent and distinct inven-tion, and, thus, was not subject to the CIP provisionof the assignment concerning the first invention.VanVoorhies also asserted that the ‘609 applicationwas not subject to assignment to WVU under theWVU’s patent policy because he did not conceivethe second invention while being associated withWVU.

The Federal Circuit disagreed, concluding thatthe ‘340 application constituted a CIP applicationof the ‘970 application for at least three reasons.First, the ‘340 application fell within the PTO’s defi-nition of a CIP application because it was filed dur-ing the pendency of the ‘970 application, repeatedsome of the subject matter of the ‘970 application,and added an arrangement of elements not presentin the ‘970 application. VanVoorhies himself, theCourt noted, was also a common inventor to bothapplications. Second, the PTO accepted the ‘340application without the signature of the inventorbased on its review of the CIP provision containedin the assignment of the ‘970 application. Third,the fact that VanVoorhies himself, as a licensedpatent agent, had urged WVU to file a CIP applica-tion for the second invention provided compellingevidence that the ‘340 application was a CIP of the‘970 application. Accordingly, the Court affirmedthe district court’s order requiring VanVoorhies to

assign the ‘340 CIP application to WVU because hebreached his duty by refusing to do so.

With respect to the ‘609 application, the Courtalso held that the district court had not erred ingranting SJ on VanVoorhies’s failure to assign thisapplication to WVU. In opposition to WVU’smotion for SJ, VanVoorhies had presented some evi-dence that consisted of several unwitnessed andunbound log book pages from January 1994 thattended to show that he conceived the secondinvention after receiving his doctoral degree.According to the Court, however, WVU identifiedmuch more reliable evidence, including statementsmade by VanVoorhies himself under oath, whichestablished that he conceived the invention whilehe was still a graduate student. In light of theseadmissions and even when the evidence is viewedmost favorably to VanVoorhies, the Court conclud-ed that the self-serving, uncorroborated logbookentries could not create a genuine issue of materialfact to preclude SJ in favor of WVU.

Plain Meaning and ProsecutionHistory Limit Literal Scope of Claimand Estop Infringement

Eyal H. Barash

[Judges: Newman (author), Michel, and Rader]

In Talbert Fuel Systems Patents Co. v. UnocalCorp., No. 99-1421 (Fed. Cir. Jan. 8, 2002), theFederal Circuit affirmed a district court’s grant of SJof noninfringement against Talbert Fuel SystemsPatents Company (“Talbert”) and dismissal ofTalbert’s requested interference proceeding.

Talbert owns U.S. Patent No. 5,015,356 (“the‘356 patent”), which is directed to gasoline formu-lations containing middle-end hydrocarbons sub-stantially free of both high-end and low-end hydro-carbons except for a small amount of low-endhydrocarbons added as a priming agent. Claim 1of the ‘356 patent describes Talbert’s gasoline for-mulation and further provides a boiling range ofbetween 121°F and 345°F at 1 atmosphere of pres-sure.

The lower court had construed claim 1 as limitedto formulations having a final boiling point of 345°Fand granted Unocal Corporation’s (“Unocal”)motion for SJ, finding no infringement either literal-ly or under the DOE.

On appeal, Talbert argued that the district courthad erred in its interpretation of the boiling pointrange because due to imprecise, yet standard refin-ing techniques, high-end hydrocarbons could bepresent in the mixture that would, in turn, lead to

an increased boiling point. Further, Talbert arguedthat the term “consisting essentially of C6-C10”hydrocarbons in claim 1 means that some hydro-carbons outside of that range may be present.

In analyzing the scope of the claims, the FederalCircuit focused on comments made by Talbert dur-ing prosecution of the ‘356 patent where Talberthad stated that 345°F was the “final boiling point”for its formulations. The Court rejected Talbert’sargument that this statement was made merely tohelp show that the newly added claim term “paraf-finic hydrocarbons” was not new matter under35 U.S.C. § 112. The Court ruled that during pros-ecution Talbert had stressed that 345°F was thefinal boiling point and relied on this final boiling-point limitation in distinguishing several prior artreferences. As such, Talbert was precluded fromreading the literal scope of its claims on a boilingpoint above the 345°F level.

The Court further ruled that because Talbert haddistinguished its claims from prior art based on this345°F limitation, Talbert was now estopped fromexpanding the reach of its claims under the DOEunder Festo.

Talbert also argued that the lower court haderred in not declaring an interference proceeding.According to Talbert, in 1989, it had disclosed itsinvention to Unocal, who then evaluated Talbert’sinvention but expressed no interest in it. About ayear later, Unocal filed a patent application thatlater issued as U.S. Patent No. 5,288,393 (“the ‘393patent”). Claim 81, the claim at issue regardingTalbert’s interference request, was directed to anunleaded gasoline fuel. Talbert had requested thatthe district court issue a declaration of priority ofinvention under 35 U.S.C. § 291 for Talbert. Thedistrict court had denied Talbert’s request, statingthat the inventions were not the same becauseUnocal’s patent did not state a similar boiling pointand the ‘393 patent’s limitations on olefin andparaffinic content were also distinguishing. Onappeal, Talbert had argued that the inventions werethe same based on characteristics, even though theinterfering claims recited different limitations.

The Court agreed with Talbert’s legal interpreta-tion, but found Talbert’s evidence wanting. In affi-davits provided to the district court, Talbert arguedthat a gasoline in accordance with claim 1 of the‘356 patent would have the same characteristics ofclaim 81 of the ‘393 patent. The Court found thatthe affidavits did not support this opinion and theyalso failed to respond to Unocal’s position that itsclaimed fuel had an octane value of 92, whereasTalbert’s fuel had an octane of 84.3 and requiredadditives to reach 92. Thus, according to theCourt, the inventions were not the same and evenif one skilled in the art would have known how toraise the octane level in Talbert’s fuel into one of a

higher octane such as in claim 81, that would nothave met the inherency requirement in the contextof obviousness. Accordingly, the Court affirmed thedistrict court’s decision, declining to declare aninterference.

Federal Circuit Upholds PreliminaryInjunction Against Designers

Nicole M. Fortuné

[Judges: Mayer (author), Dyk, and Lourie (dis-senting)]

In Hoop v. Hoop, No. 01-1288 (Fed. Cir. Jan. 30,2002), the Federal Circuit affirmed a decision grant-ing a preliminary injunction against designers, Markand Lisa Hoop, preventing them from making,using, and selling certain eagle-shaped, motorcyclefairing guards. The Federal Circuit found no abuseof discretion in the lower court’s ruling that theinventors would likely succeed in sustaining thevalidity of their design patent.

Jeffrey and Stephen Hoop (“the Hoop brothers”)had conceived a design for an eagle-shaped,motorcycle fairing guard in 1998. Fairings arestructures on motorcycle handlebars for reducingwind drag. The guard attaches to the fairings toprotect them from damage when a motorcycleleans over. The Hoop brothers drew up theirdesign, but, lacking certain expertise, they hiredtheir cousin, Lisa Hoop, a graphic designer, and herex-husband, Mark Hoop, a metal die caster, toassist in preparing drawings and models for apatent application. The Hoop brothers’ designpatent issued as U.S. Design Patent No. 428,831(“the ‘831 patent”).

Several months after the Hoop brothers filedtheir application, Mark and Lisa Hoop also appliedfor a design patent using the same drawings theyhad prepared for the Hoop brothers. This patentissued as U.S. Design Patent No. 431,211 (“the‘211 patent”). Upon reexamination, however, thePTO rejected the second patent as anticipated bythe Hoop brothers’ design patent.

Lisa and Mark Hoop then brought suit to invali-date the first patent. The Hoop brothers counter-sued and sought to enjoin Mark and Lisa from prac-ticing the invention. Finding the Hoop brothers tobe the true inventors, the district court held thatthey were likely to succeed in upholding the validityof their patent and that Lisa and Mark Hoop werelikely infringing.

On appeal, the Federal Circuit affirmed, findingno abuse of discretion based upon either an error oflaw or a serious misjudgment of the evidence.Framing the issue as whether Mark and Lisa Hoop’s

page 07

L A S T M O N T H A T T H E F E D E R A L C I R C U I T

F I N N E G A N H E N D E R S O N F A R A B O W G A R R E T T D U N N E R L L P.

2 0 0 2 F E B R U A R Y

08 page

F I N N E G A N H E N D E R S O N F A R A B O W G A R R E T T D U N N E R L L P.

refinements rose to the level of inventorship, theFederal Circuit confirmed that the same standard ofinventorship applied to design patents as to utilitypatents. Accordingly, an inventor is one who con-ceives the patented invention, even if he thenenlists others to help perfect the invention orreduce it to practice. The Hoop brothers wereundisputedly the first to conceive of the eagle-shaped fairing guard, reasoned the Court, and theybrought this concept to Mark and Lisa Hoop seek-ing assistance. Thus, the Court reasoned, the Hoopbrothers must remain the true inventors unlessMark and Lisa Hoop themselves contributed therequisite inventive quality to establish a separatepatentable design.

Reviewing the parties’ designs, the Court notedonly some detailed feathering, the removal of asuggested eagle’s tail, and an overall less triangularshape as differences. Otherwise, the parties draw-ings were strongly similar, having the same propor-tions, body size, and orientation, including thesame eye placement, head and beak shape, andeven the same three rows of feathers. Thus, theFederal Circuit affirmed the finding that Mark andLisa Hoop merely refined and perfected the Hoopbrothers’ concept and upheld the district court’sdecision to grant a preliminary injunction.

Judge Lourie dissented, proffering that the dis-trict court had applied an incorrect legal standard indetermining design-patent inventorship. Ratherthan claiming a concept, Judge Lourie argued,design patents claim specific designs, which mustrefer to the appearance of the patent’s drawings.Hence, the invention is not the concept of an eagledesign, but its specific representation, and the dis-trict court should have focused on the differencesbetween the overall appearance of the eagles,rather than the concept of the design, in determin-ing whether they were separate inventions.

Evidence of Experimental Use“Sinks” Summary Judgment ofInvalidity on Floating Dock Patent

Clifford E. Ford

[Judges: Rader (author), Mayer, and Linn]

In EZ Dock, Inc. v. Schafer Systems, Inc., No. 00-1443 (Fed. Cir. Jan. 15, 2002), the Federal Circuitoverturned a district court’s decision that had grant-ed SJ of patent invalidity due to a sale that hadoccurred more than one year prior to the filing ofthe patent application. The Federal Circuit ruledthat substantial questions of fact remained concern-ing whether the transaction was for experimentalrather than commercial purposes.

The Court reiterated that Pfaff v. Wells Electronics,Inc., 525 U.S. 55 (1998), requires that the on-salebar be applied to inventions that are (1) the subjectof a commercial offer and (2) ready for patenting.The Court noted, however, that if a sale is forexperimental purposes, it is not truly commercial.Further, if the inventor is still experimenting withthe invention, it may not be ready for patenting.

This case involved a patent on a floating dock.More than one year prior to filing a patent applica-tion, the patentee made a single sale. The Courtconsidered factors such as absence of “for sale”signs, reduced price, free installation, the fact thatthe sale was instigated by the buyer, that the inven-tors visited the sold dock to monitor its perform-ance and maintained the dock at no charge, andthat the design was changed slightly as a result.Considering all of these factors, the Court held thata jury could reasonably find that the sale was exper-imental rather than commercial; therefore, SJ wasinappropriate.

Dismissal Without Prejudice Not anAbuse of Discretion

Donald D. Min

[Judges: Bryson (author), Newman, and Dyk]

In H.R. Technologies, Inc. v. Astechnologies, Inc.,No. 01-1121 (Fed. Cir. Jan. 11, 2002), the FederalCircuit held that a district court’s dismissal of apatent infringement action without prejudice(rather than with prejudice) was not an abuse ofdiscretion. However, the Federal Circuit did findlegal error in the district court’s dismissal of certaincounterclaims.

H.R. Technologies, Inc. (“HRT”) filed suit againstAstechnologies, Inc. (“Astechnologies”) for infringe-ment of U.S. Patent No. 5,665,185 (“the ‘185patent”), which claims a process for preparing aglass fiber containing a polymer sheet. In response,Astechnologies filed a counterclaim seeking a DJ ofnoninfringement; a federal counterclaim of unfaircompetition in violation of the Lanham Act, 15U.S.C. § 1125; a state law counterclaim of tortiousinterference with potential business relations; andattorney fees.

HRT asserted ownership of the ‘185 patent pur-suant to an assignment from ESFI Acquisition(“ESFI”). During discovery, however, the partieslearned that HRT did not own the ‘185 patentbecause ESFI did not own the patent at the time ofthe purported assignment. Subsequently,Astechnologies moved to dismiss the complaintwith prejudice on the ground that HRT lackedstanding. HRT in turn moved to dismiss the actionwithout prejudice.

The district court dismissed the action withoutprejudice. HRT corrected the assignment error andrefiled its complaint against Astechnologies in a sec-ond action. Astechnologies filed a motion forreconsideration of the dismissal order. The districtcourt denied the motion for reconsideration andclarified that it was not only dismissing HRT’s com-plaint without prejudice, but also was dismissingAstechnologies’ counterclaims. Astechnologiesrefiled the same counterclaims in response to HRT’scomplaint in the second action, appealed the without-prejudice aspect of the district court’sorder, and appealed the dismissal of its counter-claims in the first action.

On appeal, Astechnologies argued that the dis-trict court should have dismissed HRT’s complaintwith prejudice to bar the second action.Astechnologies argued that the dismissal of apatent infringement action should always be withprejudice when a party without standing brings it.In addition, Astechnologies argued that dismissalwith prejudice of the first action was requiredbecause of alleged misconduct by HRT during thediscovery process.

The Federal Circuit first ruled that it had jurisdic-tion to hear Astechnologies’ appeal of the without-prejudice aspect of the dismissal, since dismissalwithout prejudice of a party’s claims over thatparty’s objection is a final, appealable order. TheCourt explained that even though the dismissalorder was partially favorable to Astechnologies, itcould still appeal the without-prejudice aspect ofthe dismissal. In its analysis, the Court noted sever-al distinctions from Parr v. United States, 351 U.S.513 (1956), a Supreme Court case that held that acriminal defendant could not appeal a voluntary,without-prejudice dismissal of an indictment after anew indictment was filed in another district. TheFederal Circuit reasoned that the rationale of Parr—that an appeal from the first dismissal should not bepermitted because the issue can be preserved in thesecond phase of the case—was inapplicable in acivil setting. Therefore, the Court held that the dis-trict court’s order dismissing both the Plaintiff’scomplaint and the Defendant’s counterclaims wasan appealable, final order, even though it was with-out prejudice.

Under Sixth Circuit law, the Federal Circuit thenruled on whether the dismissal should have beenwith or without prejudice. The Court explainedthat because lack of standing does not go to themerits of the underlying patent issues, a dismissalfor lack of standing would not normally be expect-ed to be made with prejudice. Accordingly, theCourt agreed that the district court was within itsdiscretion to allow HRT to cure its standing defectand refile its complaint. In addition, the Courtagreed that the district court was within its discre-

tion not to dismiss with prejudice, since HRT wasunaware that its filing was premature. Accordingly,the Court held that the district court did not abuseits discretion by dismissing HRT’s complaint withoutprejudice.

However, the Court found that the district courthad erred in dismissing certain counterclaims assert-ed by Astechnologies. In particular, the Courtfound that, regardless of patent ownership, thecounterclaims of unfair competition, tortious inter-ference, the state law counterclaim, and attorneyfees against HRT were still within the district court’sjurisdiction and did not have to be dismissed, eventhough the original complaint was dismissed.Therefore, the Court vacated the district court’sorder to the extent that it dismissed these counter-claims.

Rule 11 Prefiling InvestigationDetermined by a ReasonablenessStandard

Jennifer S. Swan

[Judges: Bryson (author), Lourie, and Linn]

In Antonious v. Spalding & Evenflo Cos., No. 01-1088 (Fed. Cir. Jan. 7, 2002), the Federal Circuitvacated a district court’s finding that the patentee’sattorneys’ prefiling investigation was frivolousbecause the attorneys’ proposed construction ofclaim language was not frivolous and remanded forfurther findings as to the adequacy of the prefilinginvestigation based on the attorneys’ proposedclaim construction.

Mr. Anthony Antonious is the owner of U.S.Patent No. 5,482,279 (“the ‘279 patent”), which isdirected to metal golf club heads. Claim 1 of the‘279 patent recites that a “hosel,” which is thesocket in the head of a golf club into which theshaft is inserted, “extends and connects with” a“peripheral mass” that is positioned along the inter-face between the ball-striking face and the crown ofthe club head. Mr. Antonious determined thatSpalding & Evenflo Companies’ (“Spalding”) golfclub line, the “Intimidator,” infringed the ‘279patent after he cut one open. He then contactedhis patent counsel and advised them that he feltthe Intimidator driver infringed the ‘279 patent.

The attorneys reviewed the patent and prosecu-tion history of the ‘279 patent and interpreted theclaim 1 limitation of “extends into and connectswith said peripheral mass” to mean extends into, orabuts against, and is fastened to a peripheral mass.The attorneys determined that this interpretationwas supported by the dictionary definition of the

page 09

L A S T M O N T H A T T H E F E D E R A L C I R C U I T

F I N N E G A N H E N D E R S O N F A R A B O W G A R R E T T D U N N E R L L P.

2 0 0 2 F E B R U A R Y

10 page

F I N N E G A N H E N D E R S O N F A R A B O W G A R R E T T D U N N E R L L P.

term “into” that means “inside or interior of” or,alternatively, “against” (as in “crashed into a tree”).After construing the claims of the ‘279 patent, theattorneys examined Mr. Antonious’s cut-openSpalding Intimidator club and determined that theIntimidator infringed Mr. Antonious’s patentbecause the hosel of the Intimidator club bothabutted against and joined with the interior portionof the flange. The attorneys also reviewed literatureabout the Spalding Intimidator clubs, includingSpalding’s patents and advertisements, and deter-mined that other Intimidator clubs also infringedthe ‘279 patent because this literature disclosedthat other Intimidator metal woods used the sametitanium insert technology as the drivers. After con-ducting this investigation, Mr. Antonious, with theassistance of his attorneys, filed suit againstSpalding.

Spalding subsequently filed for SJ, which the dis-trict court granted. Following an appeal of the dis-trict court’s decision of the SJ motions, the districtcourt addressed a sanctions issue and awarded$30,000 in sanctions to Spalding against Mr.Antonious’s attorneys in connection with its claimagainst Spalding. Specifically, the district courtconcluded that the attorneys had failed to ade-quately investigate whether the hosel of theaccused Intimidator metal woods extended intoand connected with a portion of the peripheralmass and that they had no basis for asserting thislimitation of the claims against Spalding. The dis-trict court’s conclusion that the attorneys’ prefilinginvestigation was inadequate was based on the dis-trict court’s construction of the claim language atissue.

On appeal, the Federal Circuit examinedwhether Mr. Antonious’s attorneys’ claim construc-tion was frivolous or if the attorneys’ prefiling inves-tigation was inadequate in violation of Fed. R. Civ.P. 11. The Court stated that Rule 11 in the contextof patent infringement cases requires that an attor-ney interpret the pertinent claims of the patent atissue before filing a complaint alleging patentinfringement. Further, the Court stated, in review-ing Rule 11 sanctions, the Federal Circuit appliesthe law of the pertinent regional circuit, which inthis case is the Fourth Circuit. The Fourth Circuitexamines an attorneys’ legal arguments using astandard of objective reasonableness. To satisfythat requirement, there must be some basis of lawto support each legal argument in the complaint.Using this analysis, the Federal Circuit determinedthat Mr. Antonious’s attorneys had construed theclaim independently and that they could be sanc-tioned only if a reasonable attorney would haveconcluded that the claim construction was frivo-lous. The Court determined, given the alternative

meaning of the word “into,” that the claim con-struction was not frivolous and, therefore, not inviolation of Rule 11.

The Court instructed that an attorney is in viola-tion of Rule 11 when an objectively reasonableattorney would not believe, based on some actualevidence uncovered during the prefiling investiga-tion, that each claim limitation reads on theaccused device either literally or under the DOE.The Court then remanded the case for a determina-tion as to whether the attorneys’ investigationregarding the cut-open golf club head and theadditional literature search was reasonable based onthe attorneys’ proposed claim construction.

Court Vacates Award of Priority inInterference Proceeding

Vince Kovalick

[Judges: Rader (author), Michel, and Newman(dissenting)]

In Brown v. Barbacid, No. 00-1590 (Fed. Cir. Jan.11, 2002), the Federal Circuit vacated an award ofpriority by the Board in an interference proceedingbecause the Board had failed to properly considerevidence of the conception of the invention anddiligence by one party.

The interference concerns U.S. Patent No.5,185,248 (“the Barbacid patent”) and U.S. PatentApplication Serial No. 07/937,893 (“the Brownapplication”). The Barbacid patent and the Brownapplication both claim an assay for identifying newanticancer compounds that inhibit farnesyl trans-ferase (“FT”), an enzyme involved in the control ofcell growth. The method of the count at issue inthe interference uses: (1) FT; (2) farnesyl pyrophos-phate, i.e., the source of farnesyl; (3) a “farnesylacceptor substance” or “protein or peptide sub-strate having a CAAX motif,” i.e., ras or a peptideof ras containing the CAAX motif (which is farnesy-lated); and (4) a test or candidate substrate, whichinhibits FT and, therefore, ras protein activity.

The Barbacid patent application was filed onMay 8, 1990, while the Brown application wasaccorded the benefit of an application filed on April18, 1990. Thus, Brown was named the seniorparty.

Barbacid showed an actual reduction to practiceno later than March 6, 1990. On appeal, theFederal Circuit first addressed whether a seniorparty has the burden to show by a propoundence adate of invention before the priority date shown bythe junior party. The Court ruled that the burdenrests on the junior party to establish priority by a

preponderance of evidence; however, both partiesmust be given an opportunity to submit evidenceregarding priority in an interference proceeding.The junior party’s burden, however, never shifts.

As to the evidence, the Federal Circuit concludedthat the Board had failed to properly consider note-book entries of Dr. Reiss showing his conception ofaspects of the count. The Board had abused its dis-cretion, the Court concluded, in excluding thesenotebook entries for lack of authentication.

The notebook entries, however, did not show alllimitations of the count. Dr. Reiss testified thatexperiments conducted on September 25, 1989,contained all the limitations of the count, but thetestimony was not corroborated by Dr. PatrickCasey’s testimony. Accordingly, the Board did noterr when it determined that evidence regarding aDecember 1989 experiment did not show a reduc-tion to practice by Brown. The Federal Circuitfound, however, that physical evidence itself, theFebruary 25th notebook pages and autoradi-ographs, showed that an experiment containing allelements of the count took place on that date. TheCourt ruled that physical evidence requires no fur-ther corroboration to demonstrate the content ofthe physical evidence itself. In addition, Dr. Casey’s

testimony does corroborate Dr. Reiss’s testimony ofa conception before December 1989. The FederalCircuit ruled that the Board had erred in not con-sidering all of this evidence with regard to the dateof conception by Brown as well as additional evi-dence concerning Brown’s diligence.

Judge Newman dissented, concluding that themajority wrongly stated the burdens of proof andproduction in patent interferences. She concludedthat the Board had correctly required Brown, thesenior party, to meet the burden of proving by apreponderance of evidence, conception, and/orreduction to practice before the date that had beenproven by the junior party, Barbacid.

F I N N E G A N H E N D E R S O N F A R A B O W G A R R E T T D U N N E R L L P.

DISCLAIMER:The case summaries reflect the understanding ofthe authors only and are not meant to conveylegal opinions or advice of any kind. The firm dis-claims any liability for any errors or omissions inthese summaries. This promotional newsletterdoes not establish any form of attorney-clientrelationship with our firm or with any of ourattorneys.

page 11

In Last month at The Federal Circuit, certain terms, titles, and names of fed-eral agencies that are frequently referred to in text, appear in abbreviatedforms or as acronyms. These abbreviated forms and acronyms are listed below.

ALJ Administrative Law Judge APJ Administrative Patent Judge Board Board of Patent Appeals and InterferencesCommissioner Commissioner of Patents and Trademarks CIP Continuation-in-PartDJ Declaratory Judgment DOE Doctrine of EquivalentsIP Intellectual PropertyITC International Trade CommissionJMOL Judgment as a Matter of Law MPEP Manual of Patent Examining ProcedurePCT Patent Cooperation TreatyPTO United States Patent and Trademark Office SEC Securities and Exchange CommissionSM Special Master SJ Summary Judgment