Monday, May 28, 2012

Cummins-Allison prevails over SBM at CAFC

The outcome

In this appeal, the parties challenge several of the dis- trict court’s infringement and invalidity holdings, and Amro and SBM claim that the damages award should be set aside. We uphold the damages award and affirm the district court’s denial of JMOL as to the validity of the asserted claims of the ‘806 and ‘503 patents and the infringement of Claim 15 of the ‘503 Patent. However, we reverse the district court’s grant of JMOL of anticipation of Claim 55 of the ‘354 Patent because substantial evi- dence supported the jury’s verdict. We have considered the parties’ other arguments made on appeal and find that they provide no basis for relief. 

As to JMOL:

 JMOL is appropriate when “a party has been fully heard on an issue during a jury trial and the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue.” Fed. R. Civ. P. 50(a)(1). “In determining whether a reasonable jury would have a legally sufficient evidentiary basis for the facts as found, we must presume that the jury re- solved all factual disputes in favor of the prevailing party, and we must leave those findings undisturbed so long as substantial evidence supports them.” Cordis Corp. v. Boston Sci. Corp., 658 F.3d 1347, 1358 (Fed. Cir. 2011). 

As to anticipation:

 Anticipation under 35 U.S.C. § 102 is a question of fact, and a jury determination of anticipation is reviewed for substantial evidence. ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1343 (Fed. Cir. 2012); 3M v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002). Substantial evidence, however, requires more than a mere scintilla; rather, it is such relevant evidence as a reason- able mind might accept as adequate to support a conclu- sion. In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000) (citation omitted). The court must review the record as a whole, but the mere fact that it may be possible to draw two inconsistent conclusions from the record does not lead to the conclusion that substantial evidence does not support the jury’s determination. Id.  

Here, a priority date, and written description were at issue:

 A claim is entitled to priority from the filing date of an earlier filed application, but only if the earlier filed appli- cation describes the subject matter of the claim as re- quired by § 112. 35 U.S.C. § 120. Section 112 requires a patent specification to contain a “written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” 35 U.S.C. § 112. Thus, if the later filed application’s claims are not set forth in the earlier filed application with the specificity that § 112 requires, the later filed application cannot claim the earlier filing date for those claims. 35 U.S.C. § 120.
Compliance with the written description requirement is a question of fact. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). To satisfy the written description requirement, a patent’s specification must reasonably convey to a person having ordinary skill in the art that the inventor had possession

of the later-claimed subject matter as of the earlier filing date. Id. While the earlier filed application need not describe the later filed claims verbatim, a description that merely renders the later filed invention obvious is insuffi- cient. Id. at 1352.
In proper circumstances, drawings alone may provide an adequate written description under § 112 if they describe what is claimed and convey to those of skill in the art that the patentee actually invented what is claimed. Cooper Cameron Corp. v. Kvaerner Oilfield Prods., 291 F.3d 1317, 1322 (Fed. Cir. 2002) (internal citation omitted); see also Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). In cases involving dimensions, the test is whether one skilled in the art could derive the claimed dimensions from the patent’s disclosure. Vas-Cath, 935 F.2d at 1566 (citation omitted). 

The disagreement between the district court and the CAFC:

 The jury found that Claim 55 of the ‘354 Patent was not anticipated by the JetScan 4062. However, the dis- trict court disagreed and granted JMOL. Specifically, the district court found that the ‘854 Application and ‘259 Patent do not describe or discuss the specific dimensions in Claim 55, and the figures contained therein do not show the dimensions. The district court stated that “pat- ent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” (citing, inter alia, Hockerson-Halberstadt, Inc. v. Aria Gr. Int'l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000)). Cummins- Allison moved for reconsideration, and the district court denied the motion.
We disagree with the district court’s reliance on Hock- erson-Halberstadt.  


 Because these examples of dimensions could be used to “scale” the relevant figures and deduce dimensions from them, the district court erred in concluding that Claim 55 was not entitled to the March 1995 priority date. Substantial evidence supported the jury’s determi- nation because a person having ordinary skill in the art could have deduced the dimensions from a review of the language in the specification and the drawings them- selves. Therefore, the jury verdict should have been upheld, and we reverse.7 

Cummins v. SBM

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