Monday, December 10, 2012

CAT loses before CAFC

The appellant lost in the case Stored Value v. Card Activation Technologies [CAT]

Card Activation Technologies, Inc. (“CAT”) appeals from the decision of the United States District Court for the District of Delaware denying CAT’s motion for sum- mary judgment of validity of U.S. Patent 6,032,859 (“the ’859 patent”); granting Stored Value Solution’s (“SVS”) motion for partial summary judgment of invalidity of claims 20, 22–31, and 33–38 on the ground of lack of written description; and granting SVS’s motion for partial summary judgment of invalidity of claims 1–3, 5–7, 9–14, and 16–19 on the ground of anticipation. See Stored Value Solutions, Inc. v. Card Activation Techs., Inc., 796 F. Supp. 2d 520 (D. Del. 2011). Because the district court did not err in granting partial summary judgment on both written description and anticipation grounds, we affirm.

The CAFC noted that a district court's claim construction may change:

the court may “revisit[] and alter[] its interpretation of the claim terms as its understanding of the technology evolves.” Conoco, Inc. v. Energy & Envtl. Intern., L.C., 460 F.3d 1349, 1359 (Fed. Cir. 2006).

Written description issues arose in the case:

CAT argues that the district court incorrectly raised the written description issue sua sponte. CAT Reply Br. 26. We disagree. The district court raised the written description issue under Federal Rule of Civil Procedure 56(f), which allows the court to “grant [a motion] on grounds not raised by a party” after “giving notice and a reasonable time to respond.” The Advisory Committee’s Notes further explain that “[a]fter giving notice and a reasonable time to respond the court may grant summary judgment . . . on legal or factual grounds not raised by the parties; or consider summary judgment on its own.” Fed. R. Civ. P. 56(f) Advisory Committee’s Notes (2010).

LizardTech was cited:

CAT argues on appeal that the district court applied the wrong standard of law and that there is no require- ment that a preferred embodiment show all steps of a claim. CAT relies on LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005) for the proposition that “[a] claim will not be invalidated on section 112 grounds because the embodiments of the specification do not contain examples explicitly covering the full scope of the claim language.” Id. at 1345 (empha- sis added). In LizardTech, the patentee’s claim was “directed to creating a seamless array of [image compres- sion] coefficients generally.” Id. The patentee’s specifica- tion, however, was “directed at describing a particular method for creating a seamless [array], . . .” Id. Thus, we held the claim invalid due to inadequate written descrip- tion. Id. Although we held the claim invalid, we recog- nized that patentees need not spell out “every detail of the invention in the specification.” Id.
However, the claim in this case is different from that in LizardTech. Here, the question is not the scope of CAT’s claims, but whether the specification showed that the inventors were in possession of the invention claimed in the newly amended claims 20 and 29.

As to a separate 102(a) matter:

35 U.S.C. § 102(a) provides that “[a] person shall be entitled to a patent unless . . . the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent; . . .” To be anticipatory, a reference must describe, either ex- pressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
CAT first argues that the MicroTrax Manual is not prior art under 35 U.S.C. § 102(a). CAT argues that SVS failed to meet its burden to establish that the MicroTrax Manual was both printed and published prior to the priority date of the ’859 patent. CAT further argues that the MicroTrax Manual was not prior art because an earlier version of the manual—Version 2—was not before the court. CAT argues that the testimony of the Micro- Trax founder is also “uncorroborated oral testimony” and could not establish that the MicroTrax Manual was publicly available. We disagree.


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