Radio Systems Corp. v. Accession, Inc., No. 2010-1390 (Fed. Cir. Apr. 25, 2011) (Judges Bryson, Linn, and Dyk)

This case involves a common question of personal jurisdiction: how much local activity is enough to create specific jurisdiction? In this case, a product preview meeting wasn’t enough.

Radio Systems is based in Tennessee and makes, among other products, the SmartDoor, an electronic pet access door that opens in response to a transmitter worn by the pet. Accession is based in New Jersey and owns the ’141 patent, which is directed to a portable pet access door (the “Wedgit”) that can be inserted into sliding glass doors. Accession initiated correspondence with Radio Systems about licensing the Wedgit, and the two companies discussed a license, though they didn’t reach an agreement. Meanwhile, Radio Systems filed its own patent application for the SmartDoor.

A couple of years later, Accession again contacted Radio Systems about commercializing the Wedgit. The president (and sole employee) of Accession travelled to Tennessee to give Radio Systems a demonstration. As before, there were emails exchanged, but no license agreement. Later that year, the PTO issued a notice of allowance for Radio Systems’ patent application. Accession’s counsel (in New Jersey) contacted the examiner to inform him of the ’141 patent and soon sent a letter alleging infringement and offering a license of this technology to Radio Systems.

Radio Systems filed a declaratory judgment action alleging noninfringement and invalidity of the ’141 patent in the Eastern District of Tennessee. The district court granted Accession’s motion to dismiss for lack of personal jurisdiction. Accession then filed suit in New Jersey.  That case was stayed, pending this appeal.

The Federal Circuit agreed with the district court that the activities associated with Tennessee were not sufficient to create specific jurisdiction. The court distinguished between the earlier attempts to commercialize the Wedgit and the cease-and-desist letters that Accession sent to Radio Systems. The court determined that these earlier contacts were not related to “enforcement and defense” and therefore could not support Tennessee specific jurisdiction with respect to an infringement suit. The court also concluded that Accession’s contacts with the PTO regarding Radio Systems’ patent application took place outside Tennessee and did not support jurisdiction. Cease-and-desist correspondence alone is not sufficient to create personal jurisdiction, so the Federal Circuit affirmed the district court’s dismissal of that case for lack of personal jurisdiction.

You can read the court’s full opinion here.

Billups-Rothenberg, Inc. v. Associated Regional and University Pathologists, Inc., No. 2010-1401 (Fed. Cir. Apr. 29, 2011) (Judges Gajarsa, Linn, and Moore)

This case presented the court with an opportunity to apply its revised written description test articulated in Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc). The patents-at-issue are directed to tests for hemochromatosis, a genetic disorder in which a person accumulates excess iron in the body. Billups sued for infringement of two patents. The first patent, the ’681 patent, claims a method of identifying someone predisposed to hemochromatosis by detecting a mutation in a certain gene, although the specification does not disclose either the gene sequence or any particular mutation. In fact, Billups was not aware of any such mutation until later research identified possible candidates. The second patent, the ’425 patent, claims a method for diagnosing an iron disorder by testing for genetic mutations including the specific mutation S65C. The S65C mutation was identified and isolated previously by other researchers not affiliated with Billups, and was also described in the ’130 patent, a prior art patent to the ’425 patent.

The district court granted summary judgment of invalidity of both the ’681 and ’425 patents: the ’681 patent was held invalid for failure to comply with the written description requirement and the ’425 patent was held invalid as anticipated by the ’130 patent.

Looking first at the ’681 patent, the Federal Circuit noted that for a genus claim, the patentee must describe either a representative set of species or structural features common to the members of the genus. The ’681 patent did not describe a single species of mutation. The Federal Circuit also agreed with the district court that the functional descriptions of the mutations did not identify structural characteristics of those mutations. And in fact, Billups did not know of any particular mutations that would work at the time the ’681 patent was filed. The court agreed that the patent lacked written description of certain functional claims.

With respect to the ’425 patent, there was apparently no dispute that the ’130 patent disclosed a correlation between hemochromatosis and the identification of the S65C mutation. Billups argued that the ’130 patent could not anticipate, however, because it did not teach a method of diagnosis of an iron disorder. Rather, Billups claimed, the ’130 patent failed to recognize the importance of the presence of the S65C mutation. The Federal Circuit held that it didn’t matter if the inventors of the ’130 patent didn’t understand the utility of their invention. The ’130 patent disclosed a test for hemochromatosis using the detection of the S65C mutation as one input, and that was enough to anticipate the ’425 patent.

You can read the court’s full opinion here.

Juniper Networks, Inc. v. Shipley, No. 2010-1327 (Fed. Cir. Apr. 29, 2011) (Chief Judge Rader, Judges Newman and Linn)

This is a different kind of qui tam false marking case. The typical false marking case du jour involves a product marked with now-expired patents. Here, Shipley was accused of falsely marking a firewall software project on his website. Juniper alleged that the patents he listed next to a status description of the project were invalid because they were based on an anticipating public use. The district court dismissed Juniper’s complaint for failure to state a claim because there was no accusation that the firewall software itself was falsely marked. Because the patent numbers were on a website, but not the article itself, there could be no false marking.

The Federal Circuit agreed. Although the court made clear that a website could be an “unpatented article” within the meaning of 35 U.S.C. § 292, it found that the website was clearly not the article being marked in this case. Rather, the text of the website listed a number of Shipley’s projects and their statuses; it was clear from context that the patent numbers referred to the firewall project and not the website itself.

In an interesting section, the court addressed an argument from Shipley that Juniper lacked standing to bring the qui tam action because he had never offered for sale any product that, if falsely marked, would cause actual injury. Even though it was unnecessary to reach it, the court rejected Shipley’s argument, noting that “even if the United States suffers no proprietary injury involving diminishment of the federal treasury, the Patent Act makes deceptive patent mismarking ‘an injury to the United States.’” Slip op. at 13.

The Federal Circuit affirmed the dismissal of Juniper’s complaint.

You can read the court’s full opinion here.

Wellman, Inc v. Eastman Chemical Co., No. 2010-1249 (Fed. Cir. Apr. 29, 2011) (Chief Judge Rader, Circuit Judge Lourie, and District Judge Ronald M. Whyte of the Northern District of California, sitting by designation)

This case involves the district court’s grant of summary judgment of invalidity of Wellman’s patents directed to polyethylene terephthalate (“PET”) resins for use in plastic beverage containers. The district court held that all but five of the asserted claims were invalid for failure to disclose the best mode and that all of the asserted claims were invalid for indefiniteness. The Federal Circuit agreed with the first holding but not with the second.

With respect to the best mode, at least two of the inventors, at the time of invention, believed that the resin Ti818 was the preferred way of practicing the invention. The specifications, however, did not disclose Ti818. Moreover, the preferred ranges of ingredients disclosed in the patents actually excluded Ti818, and a key ingredient of Ti818 (called “N990”) was intentionally kept secret. The Federal Circuit therefore agreed with the district court that all but five of the asserted claims were invalid for failure to disclose the best mode. The parties disputed whether the five remaining claims covered Ti818, so summary judgment was not appropriate for those claims.

With respect to indefiniteness, the district court’s holding hinged on a determination of whether one of ordinary skill in the art would have been able to understand the bounds of the claims. The district court had determined that the lack of specificity about moisture conditions during preparation of the claimed resin in order to obtain consistent measurements by differential scanning calorimetry would prevent one of ordinary skill in the art from preparing the claimed resins. The Federal Circuit disagreed, finding as a factual matter that following industry standards would have produced predictable results. Thus, the court reversed the lower court’s holding of indefiniteness.

You can read the court’s full opinion here.