Monday, January 23, 2012

Kent State University loses in Falana case

The CAFC noted that claims define the patent right:

This court agrees with Falana. “[I]t is the claims, not the written description, which define the scope of the patent right.” Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998) (“[A] court may not import limitations from the written description into the claims.”). The claims here do not contain express limitations con- cerning a HTP that is substantially independent of tem- perature. Moreover, this court has “cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” See Teleflex, Inc. v. Focosa N. Am. Corp., 299 F.3d 1313, 1327-28 (Fed. Cir. 2002). Here, there is no suggestion in the intrinsic record that the applicant intended the claims to have the limited scope suggested by the Defendants. “Absent such clear statements of scope, we are constrained to follow the language of the claims, rather than that of the written description.” Id. at 1328.

The CAFC on joint inventorship:

“A joint invention is the product of a collaboration between two or more persons working together to solve the problem addressed.” Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227 (Fed. Cir. 1994). People may be joint inventors even though they do not physically work on the invention together or at the same time, and even though each does not make the same type or amount of contribution. 35 U.S.C. § 116.

“Thus, the critical question for joint conception is who conceived, as that term is used in the patent law, the subject matter of the claims at issue.” Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998). “A contribution to one claim is enough.” Id. “The statute does not set forth the minimum quality or quantity of contribution required for joint inventorship.” Burroughs, 40 F.3d at 1227. Each joint inventor, however, “must contribute in some significant manner to the conception of the invention.” Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997). Conception of a chemical compound “requires knowledge of both the specific chemi- cal structure of the compound and an operative method of making it.” Id.

The CAFC on the American Bioscience case:

American Bioscience did not hold that a putative inventor’s contribution of the method for making a novel genus of claimed compounds is irrelevant on the question of inventorship of the patent. As explained above, the conception of a chemical compound necessarily requires knowledge of a method for making that compound. Fina, 123 F.3d at 1473. In some circumstances, the method of making a compound will require nothing more than the use of ordinary skill in the art. In those circumstances, the contribution of that method would simply be “[t]he basic exercise of the normal skill expected of one skilled in the art” and would not normally be a sufficient contribution to amount to an act of joint inventorship. Id. (citing Sewall v. Walters, 21 F.3d 441, 416 (Fed. Cir. 1994)); cf. Oka v. Youssefyeh, 849 F.2d 581, 583 (Fed. Cir. 1988) (stating in the interference context that “[w]hen . . . a method of making a compound with conventional tech- niques is a matter of routine knowledge among those skilled in the art, a compound has been deemed to have been conceived when it was described, and the question of whether the conceiver was in possession of a method of making it is simply not raised”).

As to the award of fees:

“By its express terms, § 1295(a)(1) requires that the decision of the district court be ‘final.’” Special Devices, 269 F.3d at 1343. A decision to award attorney fees under 35 U.S.C. § 285 is not final and appealable before the award has been quantified. Id. This rule “prevents piecemeal appeals involving 35 U.S.C. § 285—a first appeal to contest the exceptional finding per se, and a second appeal to contest the amount of the attorney fees.” Id.

Here, the district court issued one order—concluding: (1) that Falana was a joint inventor on the patent; (2) that the case was exceptional; and (3) that an award of attor- ney fees was justified. The district court’s decision on the merits, i.e. its decision on joint inventorship, is final and reviewable by this court. Budinich v. Becton Dickinson & Co., 486 U.S. 196, 202-03 (1988) (“[A] decision on the merits is a ‘final decision’ . . . whether or not there re- mains for adjudication a request for attorney’s fees at- tributable to the case.”). But the district court’s exceptional case determination is a separately appealable judgment which itself must be final. See White v. N. H. Dep’t of Emp’t Sec., 455 U.S. 445, 452 (1982) (“Unlike other judicial relief, . . . attorney’s fees . . . are not compensation for the injury giving rise to an action. Their award is uniquely separable from the cause of action to be proved at trial.”); McCarter v. Ret. Plan for Dist. Manag- ers, 540 F.3d 649, 652 (7th Cir. 2008) (“[T]he upshot of White’s approach is that decisions on the merits and decisions about attorneys’ fees are treated as separate final decisions, which must be covered by separate notices of appeal—each filed after the subject has independently become ‘final.’”). The district court’s decision finding the case exceptional and awarding attorney fees that remain as of yet unquantified is not final and thus, not appeal- able. Special Devices, 269 F.3d at 1345 (“[A] decision to award unquantified attorney fees in an exceptional case under 35 U.S.C. § 285 is not final.”). A non-final decision does not become final simply because it is issued in the same order as a final decision. (...)

The Supreme Court, in Swint v. County Chambers Commission, 514 U.S. 35 (1995), “threw cold water on pendent appellate jurisdiction.” McCarter, 540 F.3d at 653. In Swint, the Court concluded that pendent appel- late jurisdiction was incompatible with 28 U.S.C. § 1291, which limits appeals to “final decisions,” and unnecessary because Congress has authorized the judiciary to pre- scribe rules to provide for interlocutory appeals. Swint, 514 U.S. at 48.1 Although the Court did not completely
rule out all possibility of pendent appellate jurisdiction, it did make clear that only the most extraordinary circum- stances could justify the use of pendent appellate jurisdic- tion. See id. at 50-51 (“We need not definitively or preemptively settle here whether or when it may be proper for a court of appeals, with jurisdiction over one ruling, to review, conjunctively, related rulings that are not themselves independently appealable.”). These ex- traordinary circumstances may be present when the nonappealable decision is “inextricably intertwined” with the appealable decision or when review of the nonappeal- able decision is “necessary to ensure meaningful review” of the appealable decision. Id. at 51; Gilda Marx, Inc. v. Wildwood Exercise, Inc., 85 F.3d 675 (D.C. Cir. 1996) (refusing, post-Swint, “to create a blanket rule absolutely barring pendent appellate jurisdiction over non-final attorney’s fee liability orders” but noting that “as a gen- eral matter,” the review of such orders “will be rare excep- tions”). Swint held that the Eleventh Circuit erred in invoking pendent appellate jurisdiction because “judicial economy” is no warrant for disregarding the statutory final-decision rule. Swint, 514 U.S. at 43-44, 51.


As to Ewen

When asked if Dr. Ewen had taken secret information from Exxon, Italian scientist Adolfo Zambelli
testified by referring to a character in an Italian comedy who told secrets to everyone. "Il segreto di
Pulcinella," he said. "The secret that everybody knows."


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