Thursday, September 22, 2005

Erroneous but harmless claim construction error in Cytologix v. Ventana

A jury found that Ventana infringed claims of US 6,180,061 and US 6,183,693, pertaining to an automated slide stainer to stain tissue specimens. An injunction was issued against Ventana. In its decision, the CAFC upheld the injunction as to claims 8-14 of the '061 patent. As to the remaining claims of the '061, the CAFC upheld the verdict of infringement, but remanded as to a possible retrial on obviousness. With respect to one claim of the '693, the CAFC reversed, because the verdict was not supported by substantial evidence.

The CAFC cited Guttman v Kopykake, 302 F.3d 1352, on the concept of rolling claim construction. The CAFC noted that an interpretation of one claim that renders another claim meaningless is disfavored, citing to In re Cruciferous Sprout Litigation, 301, F.3d 1343. The CAFC cited Ecolab, 285 F.3d 1362, for harmless error in a jury instruction. The CAFC cited SanDisk, 415 F3d 1278, for the idea that a claim construction that excludes a preferred embodiment is rarely if ever correct. The CAFC discussed waiving of arguments; here, Ventana's arguments about anticipation were deemed to have been waived but those on obviousness were not.

On its loss on claim 13, CytoLogix was found not to have identified the structure corresponding to "temperature controller means." The CAFC cited Alpex v. Nintendo, 102 F3d 1214.

Jack R. Pirozzolo represented appellee CytoLogix.

An earlier case involving issues with means plus function and waiving arguments was Harris v. Ericsson.

In Harris v. Ericsson, 2005 US App LEXIS 16175, an issue was whether Ericsson had waived the right to argue the law of WMS Gaming Inc. v. Int'l Game Technology, 184 F.3d 1339 (Fed. Cir. 1999) by not mentioning the case at trial. The dissent, arguing that it had, said "Ericsson, moreover, is presumed to know the law. See, e. g., Pittsburg & Lake Angeline Iron Co. v. Cleveland Iron Min. Co., 178 U.S. 270, 278, 44 L. Ed. 1065, 20 S. Ct. 931 (1900)." The 1900 case had stated "Everyone is presumed to know the law," although the case was not decided on this point. A belief that everyone knows the law is mistaken, and a presumption in that belief is likely to lead to inaccuracies possibly needing cure, as in the Harris case. No one in the Harris v. Ericsson case brought up WMS Gaming at trial, although it was quite relevant.


For further discussion of "rolling claim construction" see

Claim Construction after Phillips


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