You know how to read your e-mail on your Blackberry®, but do you know how it got there? The Federal Circuit dealt with this question last week. The court gave its interpretation of what an e-mail actually is, declined to translate Japanese, and decided where the “rear wheels” of a stroller are.
In re NTP, Inc., Nos. 2010-1243, 1254, -1263, -1274, -1275, 1276, -1278 (Fed. Cir. Aug. 1, 2011) (Judges Gajarsa, Clevenger, and Moore) and In re NTP, Inc., No. 2010-1277 (Fed. Cir. Aug. 1, 2011) (Judges Gajarsa, Clevenger, and Moore)
Six years after the Federal Circuit considered NTP’s infringement action against Research in Motion (RIM), the Federal Circuit issued its decision on the related reexamination. During the litigation, RIM asked the U.S. Patent and Trademark Office (PTO) to reexamine the eight patents NTP asserted, which cover the technology used in Blackberry® devices. The Board of Patent Appeals and Interferences (BPAI) decided that none of the claims of the eight patents are valid. The Federal Circuit agreed with the BPAI on one of the patents, but it returned the other seven patents to the BPAI with instructions to consider the patents under its new interpretation of “electronic mail.”
Considering U.S. Patent No. 6,317,592, the Federal Circuit agreed with the BPAI that all 764 reexamination claims are invalid. The court clarified what priority analysis an examiner must conduct in a reexamination. NTP argued that it should get an earlier priority date based on a parent application. Because reexaminations are limited to “substantial new question[s] of patentability,” NTP claimed that, on reexam, the examiner must accept its claim to the earlier priority date without further investigation.
The Federal Circuit rejected this argument and stated that an examiner must analyze a patent to see if it meets the requirements of 35 U.S.C. § 120 in order to claim priority. On reexam, “nothing . . . prohibits an examiner from determining whether or not a priority date was properly claimed during the original examination of the application” (page 15).
After explaining this point, the court concluded that nothing in the record indicated that the examiner had conducted this analysis. The court also reminded NTP that, without evidence in the prosecution history, there is no presumption that the examiner considered all cited references. The court accepted the BPAI’s conclusion that U.S. Patent No. 6,317,592 could not claim the earlier priority date and is invalid for anticipation.
The Federal Circuit sent the other seven patents back to the BPAI that the BPAI’s claim construction of “electronic mail/electronic mail message” was too broad. The BPAI said an e-mail only requires a destination address, but the Federal Circuit said the terms must also include the ability to write a subject and message content, and to identify the originating processor.
The court did side with the BPAI on a couple of other points. It upheld the BPAI’s findings that the evidence NTP offered to support antedating certain references was not sufficient to back up its claims, and that a prior art reference met the authenticity and accessibility requirements of a “printed publication” under 35 U.S.C. § 102(b).
Mitsubishi Chemical Corp. v. Barr Laboratories, Inc., No. 2010-1432 (Fed. Cir. Aug. 2, 2011) (Judges Bryson, Dyk, and Prost) (nonprecedential)
Moving from computer systems to pharmaceuticals, the Federal Circuit agreed with the U.S. District Court for the Southern District of New York’s judgment in an Abbreviated New Drug Application (ANDA) action.
The technology involved is argatroban, which is used in the treatment of heparin-induced thrombocytopenia, a condition in which the blood platelet count falls below normal levels. Because argatroban does not dissolve well in water, it can be problematic for pharmaceutical treatments that require high concentrations of the drug. Mitsubishi’s patent covers a method of improving solubility of argatroban by dissolving it in an ethanol/water/saccharide solution.
Barr filed an application with the FDA to manufacture a generic version of the argatroban injection and notified Mitsubishi of its application. Mitsubishi sued, and Barr defended by saying that Mitsubishi’s patent is invalid for anticipation or obviousness.
The major issue involved the English translation of a Japanese prior art reference. One key sentence described how a certain argatroban solution was prepared. Based on the translation the district court found most reliable, the prior art reference did not anticipate the claims of Mitsubishi’s patent. Barr challenged the translation the district court adopted, saying it was prepared for litigation, so its reliability was questionable.
The Federal Circuit noted that the selection of the most reliable translation is a pure question of fact, and “such determinations are ‘virtually never’ overturned for clear error” (page 9). The court rejected Barr’s argument, stating that the fact that the chosen translation prepared for purposes of litigation doesn’t make that determination clearly erroneous. Accepting the district court’s selected translation, the Federal Circuit determined that the reference in question did not anticipate Mitsubishi’s patent.
Read the original opinion here.
Joovy LLC v. Target Corp., Nos. 2010-1323, -1351 (Fed. Cir. Aug. 5, 2011) (Chief Judge Rader, Circuit Judges Linn and Prost) (nonprecedential)
After the more hard-science oriented decisions above, it’s nice to close with a more accessible technology—strollers.
The strollers in question here are Target’s Sit-N-Stand® strollers, a stroller for two children with a platform behind the seat so one child can stand on the back while the other sits in the front. Target moved for Judgments as a Matter of Law (JMOL) of invalidity and of unenforceability due to inequitable conduct. The trial court denied the invalidity JMOL but granted the inequitable conduct JMOL. The Federal Circuit reversed the denial of JMOL for invalidity and vacated the inequitable conduct JMOL.
The Federal Circuit reversed the invalidity JMOL. The court rejected Joovy’s argument that “rear wheels” in the patent meant “rear wheels of the push chair” and not “rear wheels of the platform.” Under the correct construction of “rear wheels,” the court concluded that Joovy’s patent is invalid for anticipation.
The Federal Circuit also vacated the district court’s pre-Therasense inequitable conduct finding.
Read the original opinion here.