Tuesday, September 14, 2004

Poly-America vs. GSE: issues of on-sale, preamble

-->On-sale issue

Poly-America responds that the district court was correct to deny GSE’s motion for JMOL because the process later claimed in the ’112 patent was not ready for patenting when the Gundle die was sold in 1987. That defect, it argues, prevents the sale from becoming a bar to patentability. Poly-America asserts that our decision in Kollar is inapposite and that GSE has generally failed to show that the jury charge regarding the sale of the Gundle die was either erroneous or prejudicial. Also, Poly-America argues that the jury could have found a material difference between the “choker slides” and the claimed “plugs” and that such a finding was supported by substantial credible evidence.
We agree with Poly-America that the district court properly denied GSE’s motion for JMOL

*distinction between Kollar and Minton

Whereas the transaction in Kollar involved mere know-how in need of development, the patentee in Minton transferred a fully operational computer program capable of implementing the claimed method. Id.

*neither Kollar or Minton on point here

Neither Kollar nor Minton is wholly on point here, so we need not parse out which case’s facts are closer to this one.

--> Preamble issue

“Whether to treat a preamble as a limitation is a determination resolved only on review of the entire[] . . . patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). “No litmus test defines when a preamble limits claim scope.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). On the one hand, a preamble is a claim limitation if it recites essential structure or steps, or if it is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes, 182 F.3d at 1305. On the other hand, a preamble is not limiting “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). “Further, when reciting additional structure or steps underscored as important by the specification, the preamble may operate as a claim limitation.” Catalina Mktg., 289 F.3d at 808.
We agree with Poly-America that the phrase “blown-film” is a limitation of the claims of the ’047 patent.

We therefore agree with the district court’s conclusion that a
“[r]eview of the entirety of the ’047 patent reveals that the preamble language relating to ‘blown-film’ does not state a purpose or an intended use of the invention, but rather discloses a fundamental characteristic of the claimed invention that is properly construed as a limitation of the claim itself.”


Post a Comment

<< Home