Friday, September 04, 2009

Martek case on definitions, priority, enablement, corroboration

The Martek case illustrates that one will get the definition one presents in a specification, even if that definition
is not consistent with the rest of the specification. The key question was relatively simple: are humans members of the
animal kingdom? The majority said "yes" -->

For the foregoing reasons, we hold that the district court’s claim construction is
erroneous. The proper construction for the claim term “animal” is the one explicitly
provided by the patentee: “any organism belonging to the kingdom Animalia,” which
includes humans.

The dissent in Martek includes the text:

Because humans are members of the Animalia
kingdom, Martek contends that the district court’s exclusion of humans from its claim
construction was in error.

This case illustrates the unusual situation in which a purported definition of a
claim term in the written description is totally negated by the remainder of the text of the
patent. Martek’s attempt at lexicography does not conform to the way in which it
otherwise describes its invention.

To be clear, it is the patentee (Martek) who prevails on the definition accepted by the CAFC

All asserted claims of the ’244 patent are directed to methods for achieving high
concentrations of omega-3 HUFA in an “animal.” ’244 Patent col.1 ll.21–24, col.2 ll.17–
19, col.9 l.44–col.10 l.58. The district court construed the claim term “animal” to mean
“any member of the kingdom Animalia, except humans.” Claim Construction Order at 2.
Based on the court’s construction, Martek stipulated that Lonza does not infringe the
’244 patent claims, because neither Lonza nor its customers use the claimed methods
to provide omega-3 HUFA to non-human animals.

Of the general history of the case:

Before the district court, Martek asserted that Lonza infringes the ’594, ’281,
’597, and ’244 patents. Lonza asserted defenses of invalidity under 35 U.S.C. §§ 102,
103, and 112. The district court held a Markman hearing to construe the contested
claim terms. Based on the district court’s claim constructions, Martek stipulated that
Lonza does not infringe the ’244 patent and preserved its right to appeal the court’s
construction of “animal.”

The issues before the CAFC on appeal:

On appeal, Lonza asserts that the district court erred by denying its motion for
JMOL that the ’594 patent claims are invalid as anticipated, by denying its motion for
JMOL that it does not infringe the ’281 patent claims, by excluding Lonza’s evidence of
prior invention by Dr. Long, and by construing the claim term “non-chloride sodium salt”
to include sodium hydroxide (NaOH). On cross appeal, Martek argues that the district
court erred by granting Lonza’s motion for JMOL that the ’567 patent claims are invalid
for lack of enablement and by erroneously construing the claim term “animal” to exclude

As to the invalidity arguments, there was an issue of priority dates:

Lonza argues that substantial evidence does not support the jury’s finding that
the ’594 patent claims are entitled to the priority date of the 1988 application.


Lonza argues that substantial evidence does not support the finding that the
1988 application discloses the process of extracting lipids from a mixed culture of
fermenting Thraustochytrium and Schizochytrium microorganisms. We disagree. Dr.
Wang, Martek’s expert, explained how a person of ordinary skill in the art would
recognize that disclosure in at least one passage in the 1988 application. That passage

The unicellular fungal strains isolated by the method described readily
flocculate and settle, and this process can be enhanced by adjusting the
pH of the culture to pH <7.0. A 6-fold concentration of the cells within 1-2
minutes can be facilitated by this process. The method can therefore be
employed to preconcentrate the cells prior to harvesting, or to concentrate
the cells to a very high density prior to nitrogen limitation. Nitrogen
limitation (to induce higher lipid production) can therefore be carried out in
a much smaller reactor, or the cells from several reactors consolidated
into one reactor.
1988 Application at 23.


Lonza argues that the jury could not reasonably rely on Dr. Wang’s interpretation
of the text of the 1988 application. First, Lonza notes that the 1988 application contains
no working examples that consolidate cells from different strains. However, a patent
claim is not necessarily invalid for lack of written description just because it is broader
than the specific examples disclosed. See Bilstad v. Wakalopulos, 386 F.3d 1116, 1123
(Fed. Cir. 2004) (“‘We cannot agree with the broad proposition . . . that in every case
where the description of the invention in the specification is narrower than that in the
claim there has been a failure to fulfill the description requirement in section 112.’”
(quoting In re Smythe, 480 F.2d 1376, 1382 (CCPA 1973))); In re Rasmussen, 650 F.2d
1212, 1215 (CCPA 1981) (explaining that, in the context of written description, the fact
“that a claim may be broader than the specific embodiment disclosed in a specification
is in itself of no moment”); see also Tex. Instruments, Inc. v. Int’l Trade Comm’n,
805 F.2d 1558, 1563 (Fed. Cir. 1986) (“This court has cautioned against limiting the
claimed invention to preferred embodiments or specific examples in the specification.”).

Of infringement:

A patentee may prove infringement by “any method of analysis that is probative
of the fact of infringement,” Forest Labs. v. Abbott Labs., 239 F.3d 1305, 1312 (Fed. Cir.
2001), and circumstantial evidence may be sufficient, Liquid Dynamics Corp. v.
Vaughan Co., Inc., 449 F.3d 1209, 1219 (Fed. Cir. 2006). To demonstrate that Lonza’s
accused process meets the functional claim limitation, Martek presented testimony from
two experts, each of whom concluded that Lonza’s culture medium—which contains
NaOH as the primary sodium source—causes less corrosion as compared to the
hypothetical culture medium—which contains NaCl as the primary sodium source. Dr.
Duquette, an expert in the field of corrosion, testified that Lonza’s process uses
fermentors made of 304-type stainless steel, which is highly susceptible to corrosion.

Our decision in Kim v. ConAgra Foods, Inc., 465 F.3d 1312 (Fed. Cir. 2006), is
not to the contrary. In that case, this court considered whether the district court
correctly granted JMOL of noninfringement of a “consisting essentially of” product claim
when the patentee failed to present “any examinations or tests of the actual accused
products.” Kim, 465 F.3d at 1320. Although the accused products contained all
claimed ingredients in the claimed amounts, id. at 1319, we explained that because the
claim at issue is a “consisting essentially of” claim, it is not infringed as a matter of law if
the accused products contain “additional, unclaimed ingredients that materially affect
the basic and novel properties of the invention.”


The present case is unlike Kim. Martek did not rely on conclusory expert
testimony to demonstrate that Lonza’s medium reduces corrosion. As detailed above,
Martek presented testimony from two experts, each of whom conceptually analyzed the
accused process and testified that it must meet the functional claim limitation based on
the composition of Lonza’s culture medium and the known effects of chloride
concentration on stainless steel corrosion. Contrary to Lonza’s reading of Kim, we did
not articulate a general rule requiring one who alleges infringement of a claim containing
functional limitations to perform actual tests or experiments on the accused product or
method. Instead, we stated only that “Kim did not prove infringement because she
presented no testimony based on the accused products themselves that supported a
finding of infringement.” Id. Here, Martek presented expert testimony based on the
accused process that supports a finding of infringement.

The Finnigan case was cited:

Because Lonza sought to introduce the testimony
of an alleged prior inventor under § 102(g) for the purpose of invalidating a patent,
Lonza was required to produce evidence corroborating Dr. Long’s testimony. See
Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1367 (Fed. Cir. 1999) (“‘[T]he
case law is unequivocal that an inventor’s testimony respecting [the] facts surrounding a
claim of derivation or priority of invention cannot, standing alone, rise to the level of
clear and convincing proof.’” (quoting Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir.
1993))); see also id. at 1369 (“[C]orroboration is required of any witness whose
testimony alone is asserted to invalidate a patent, regardless of his or her level of

But, how to corroborate:

To corroborate Dr. Long’s testimony that he had reduced the claimed invention to
practice prior to Martek’s date of invention, Lonza offered: (1) Dr. Long’s 1987
abandoned patent application and (2) evidence that the examples originally disclosed in
that abandoned application were later reproduced, generating the results described in
the application. On Martek’s pretrial motion, the district court excluded Lonza’s
proffered evidence based on its determination that the evidence could not sufficiently
corroborate Dr. Long’s testimony. J.A. at 7220. We hold that was not an abuse of

Abandoned patent applications are not that useful:

However, while an abandoned patent application is evidence of conception,
it is insufficient to corroborate testimony that an alleged prior inventor reduced the
invention to practice. See Tex. Digital, 308 F.3d at 1218 (holding the district court did
not abuse its discretion when it excluded testimony of a prior public use because an
unissued patent application was the only evidence of events prior to or
contemporaneous with invention); In re Schlittler, 234 F.2d 882, 885 (CCPA 1956),
overruled on other grounds by In re Borst, 342 F.2d 851, 854 (CCPA 1965) (stating that
abandoned applications may be “evidence of conception” but “furnish no evidence that
the processes or things they describe were ever made or used anywhere” (citation
omitted)); see also Singh v. Brake, 222 F.3d 1362, 1370 (Fed. Cir. 2000) (“[T]o
corroborate a reduction to practice, [we apply] a more stringent standard than that
required to corroborate a conception. Indeed, a notebook page may well show that the
inventor conceived what he wrote on the page, whereas it may not show that the
experiments were actually performed, as required for a reduction to practice.” (citation
omitted)); In re Costello, 717 F.2d 1346, 1350 (Fed. Cir. 1983) (“[A]n abandoned
application, with which no subsequent application was copending, cannot be considered
a constructive reduction to practice. It is inoperative for any purpose, save as evidence
of conception.”).

Of an allusion to Sandt Technology and Smith v. Hall, 301 U.S. 216 (1937):

In the cases cited, the corroborating evidence
that was found to be sufficient was far more extensive than what Lonza has offered. In
each case, an abandoned patent application was offered in addition to other evidence
from a time prior to or contemporaneous with the alleged invention.

The experiments performed AFTERWARDS, using the conditions of the abandoned application,
were NOT considered probative:

The only additional evidence offered by Lonza is a post hoc replication of experiments cited
in the abandoned application, which does not qualify as evidence from a time prior to or
contemporaneous with the alleged prior invention. Thus, we find Lonza’s argument that
it complied with the corroboration requirement as articulated in Sandt Technology and
Smith unpersuasive.

IPBiz notes that what Glenn Curtiss did against the Wright Brothers was a post hoc replication
of experiments (of Langley) for the purpose of invalidating the Wright Brothers' patent. The CAFC
makes no mention of this episode.

Of the presumption of validity:

Each issued patent claim is presumptively valid. 35 U.S.C. § 282. Here, Lonza
had the burden to prove by clear and convincing evidence that each asserted claim of
the ’567 patent is invalid. See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir.
1988). To meet the enablement requirement, “the specification of a patent must teach
those skilled in the art how to make and use the full scope of the claimed invention
without undue experimentation.” ln re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)
(internal quotation marks omitted). “Whether undue experimentation is needed is not a
single, simple factual determination, but rather is a conclusion reached by weighing
many factual considerations.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).

Of absence of evidence:

The district court’s grant of JMOL was inappropriate because Lonza failed to
present any evidence—much less clear and convincing evidence—that one of ordinary
skill in the art must perform undue experimentation to practice claims 4 and 5.


See also The Strange Case Martek Biosciences v. Nutrinova discussing
the panel of five (not three) judges which heard Martek, and mentioning 28 U.S.C. § 46(b), which provides that the “Federal Circuit . . . may determine by rule the number of judges, not less than three, who constitute a panel.” See also Fed. Cir. R. 47.2(a) (“Cases and controversies will be heard and determined by a panel consisting of an odd number of at least three judges, two of whom may be senior judges of the court.”)(see page 86 specifically).


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