In the January 2002 issue of Intellectual Property Today (IPT), a Mr. John D. Collier presented a somewhat sarcastic discussion of the Federal Circuit's "Patent Trial Division," based in part on analysis of the case, Durel Corp. v. Osram Sylvania Inc., 256 F.3d 1298, 59 USPQ2d 1238 (CAFC 2001). In past issues of IPT, we have discussed the scientifically incorrect analysis of stoichiometry which underlay the district court decision (52 USPQ2d 1418, 1429 (D.Az. 1998). The appellate decision presents issues of prosecution and litigation strategy.
The Key Patent Claim in Question
Although there were many issues before the district court, the issue most directly of relevance to the Federal Circuit and to Mr. Collier concerned infringement asserted by exclusive licensee / plaintiff / appellee Durel by Osram Sylvania of claim 1 of US 5,418,062, which reads as follows:
1. Encapsulated electroluminescent phosphor particles, each comprising a particle of zinc sulfide-based electroluminescent phosphor which is essentially completely encapsulated within a substantially transparent, continuous metal oxide coating; wherein said encapsulated phosphor particles have an initial electroluminescent brightness which is equal to or greater than about 50 percent of the initial electroluminescent brightness of the uncoated phosphor particles, and wherein the percent of luminescent brightness retained following 100 hours operation in an environment having a relative humidity of at least 95 percent is greater than about 70 percent of the intrinsic brightness retained following 100 hours operation, wherein initial change in electroluminescent brightness in an environment having a relative humidity of at least 95 percent and intrinsic brightness change are measured under substantially equivalent operating conditions of temperature, voltage, and frequency.
Of this text, the focus is only on the words: "metal oxide coating." The specification of US '062 defined the term "oxide coating":
As used herein, "oxide coating" means a material made up primarily of metal cations and oxygen, but which may contain minor amounts of other elements and compounds originating in the precursor materials or phosphor particles, which can be generated in coating form on phosphor particles under the conditions described herein.
The specification gave examples employing binary oxides including TiO2, SiO2 (note silicon is a semiconductor, not a metal), Al203, SnO2, and ZrO2.
Construction By The District Court
The district court construed the text "made up primarily of metal cations and oxygen" to refer to a normalization based on mass (weight) fraction. However, the district court made a scientific error in calculating mass (weight) fraction.
Osram Sylvania employed a coating of hydroxides of alumininum, including AlO(OH) and Al(OH)3. By normalizing to atomic numbers (H = 1, O = 8, Al = 13), the district court concluded that Osram's accused products fell within the scope of the claim element "metal oxide coating" because such materials were made up primarily of metal cations and oxygen. Although not clearly stated, the district court seems to have construed the text "made up primarily of metal cations and oxygen" to refer to the mass (weight) fraction of these elements. As can be seen in footnote 3 of the appellate decision (256 F.3d at 1302), the Federal Circuit adopted this by properly calculating the mass (weight) fraction of hydrogen in AlO(OH) and Al(OH)3 using atomic weights instead of atomic numbers.
This, however, does not answer the question of whether the text "made up primarily of metal cations and oxygen" was meant to refer to a mass fraction at all. An equally, if not more, plausible interpretation is that the text "made up primarily of metal cations and oxygen" refers to an atomic or mole fraction. That is, if one normalizes to the number of species (e.g., cations, atoms) or moles of species, the "metal oxide coating" is made up primarily of metal cations and oxygen on an atomic or mole basis. In this construction, 75% of the species of AlO(OH) are metal cation and oxygen [anion], and 57% of the species of Al(OH)3 are metal cation and oxygen [anion]. The court could decide whether 75% or 57% sustain the word "primarily."
Construction By The Federal Circuit
The Federal Circuit did not rely on either mass fraction or atomic fraction in determining noninfringement by Osram Sylvania. Rather, the Federal Circuit construed the text "a material made up primarily of metal cations and oxygen" as requiring that the oxide coating must comprise primarily binary metal oxides, such as the TiO2, SiO2, Al2O3, SnO2, and ZrO2 which were exemplified in the specification (256 E3d at 1303-1304). Although at the Federal Circuit cited Vitronics Corp. v. Conceptronic, Inc. 90 F.3d 1576, 1584 (use of dictionary definition allowed "so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents"), one observes that the text in the specification "made up primarily of metal cations and oxygen" would be inconsistent with the identity of binary metal oxides, which contain ONLY metal cations and oxygen [anions]. Further, although the specification referred to a "material," the Federal Circuit read in a limitation of "compound" from the examples of the specification. Although arguably any compound is a material, a material need not be a well-defined compound, such as a binary metal oxide.
Collier's Complaint
Mr. Collier was concerned with the lack of remand on the question of infringement under the doctrine of equivalents. Mr. Collier pointed out that Durel had attempted to enter evidence of infringement under Osram Sylvania's construction of the case, but that the district court judge had rejected this on the basis that such evidence was irrelevant because the judge had rejected Osram Sylvania's claim construction. n2 In the claim construction adopted by the Federal Circuit (requiring primarily binary metal oxides), the metal oxy-hydroxides and hydroxides of Osram Sylvania could not be literally or equivalently binary metal oxides. The Federal Circuit stated:
We decline to remand the case for the district court to hear arguments on infringement under the doctrine of equivalents, however, because we conclude that no reasonable fact-finder could find such infringement. 256 F.3d at 1305.
Mr. Collier also alluded to the manner of assignment of Federal Circuit judges, including the random assignment and the short time between knowledge of assignment and actual hearing. Mr. Krupka, the advocate for Osram Sylvania on appeal, acknowledged the same thing. n3 On finding a panel comprising chemists, Mr. Krupka acknowledged re-prioritizing his arguments to emphasize invalidity arguments under 35 USC 112. n4 Mr. Krupka did not prevail on these invalidity arguments, although the points were left open. 256 F.3d at 1307. As to this point, the Durel case is an interesting footnote to Cardinal Chemical Co. v. Morton Int'l., Inc., 508 U.S. 83, 98 (1993).
The Durel case is also an interesting twist on Exxon Chemical Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553 (CAFC 1995) and 137 F.3d 1475 (CAFC 1998). In the latter decision, the Federal Circuit held that patentee/plaintiff Exxon was entitled to a new trial on the issue of infringement under the doctrine of equivalents. The court stated:
The question whether there could be doctrine-of-equivalents infringement under the claim construction adopted by this court became a critical issue only after this court's decision on appeal. For that reason, this court did not address the merits of Exxon's claim that it is entitled to a new trial on infringement under the doctrine of equivalents, and the district court therefore erred in concluding that it was barred by this court's mandate from considering Exxon's new trial motion. 137 F.3d at 1479.
However, it is separately true that the court stated:
Neely [386 U.S. 317] thus stands for the proposition that in an appropriate case a court of appeals may direct that judgement be granted against an appellee without permitting the appellee to seek a new trial from the district court. 137 F.3d at 1481.
Imagine how attorneys for Durel must have felt. They walked in with a winning claim construction, obtained an unfavorable one and had their admission of hydroxides used against them to foreclose equivalents. Think about how the Durel case modifies how you draft patent applications. The somewhat open-ended text about metal oxide coating was limited by the fact that only binary oxides were exemplified.
BT and The Hyperlink
February 11 marks the preliminary hearing in the BT/Prodigy litigation in SDNY which may determine the scope of BT's rights to hyperlink texts. Possible prior art is a 1968 film clip of computer researchers at Stanford University (http://sloan.Stanford.edu/Mouse Site/1968 demo.html). Bt has given IpValue (a start-up backed by Boston Consulting, Goldman Sachs, and General Atlantic) a contract to exploit BT's patents in the U.S. n5
More Festo
Another questionable discussion of Festo appeared in publication:
The Federal Circuit's Festo decision also applied a strict rule to claims subjected to prosecution history estoppel. It abandoned its "flexible bar" practice in favor of a "complete bar" on the use of the doctrine of equivalents for the claim that results after an amendment. Thus, a claim in the application that receited A + B that is amended to recite only B would not only lose rights against defendants marking the equivalent of A + B but also against defendants making the equivalent of B. n6
It might seem that a claim that recited A + B in the application, but then was amended to recite only B, would be a broadening amendment, to recite only B, would be a broadening amendment, not a narrowing one.
In Passing
Ethics was a big theme in legal television drama. "First Monday" examined the ethics of the omission, in a brief, of a cite to a contrarian position (in this case, a cite to Madison as to the right to confront accusers). How many times do we see lawyers, and even judges, omit pertinent references which detract from their position? "Law and Order" examined the omission, by a prosecutor, of her identity as prosecutor when responding to a request of a hostage taker for a lawyer. "The Practice" explored the disclosure by an attorney representing an insurance company of medical information which likely saved the life of the opponent. In the real world, Patsy's Brand v. I.O.B. Realty, 2002 U.S. Dist. LEXIS 491 (SDNY) analyzed what happens when a [intellectual property] lawyer knowingly allows a clinet to submit a false affidavit. The case of Richard Kneeht against M&M/Mars explores the interface in intellectual property rights between an employees who develops an [arguably non-work related] invention at home but subsequently brings it to the work-place. n7 Finally, is text on the reverse doctrine of equivalents in Tate Access correct in view of Instituform (see LBE, IPT, pp. 20-21, endnote 5 (June 2001))?
Endnotes
n1 The views herein are the author's own, and should not be imputed to any employer, past, present, or future. Use of a quote does not imply agreement with the quote. The author may be reached by email at LEbert@ReedSmith.com.
n2 "John D. Collier," How to Win in the Federal Circuit's Patent Trial Division, Intellectual Property Today, pp. 22-23 (January 2002).
n3 Robert J. Krupka, Intellectual Property Laweast, Vox Juris, Reversal of $ 50M verdict rames advice on effective appellate advocacy to Federal Circuit," Vol. VII No. 14 (reviewing week of Aug. 13, 2001). See also, David Hechler, Reversing a $ 63M Patent Judgement, National Law Journal, July 30, 2001.
n4 The particular point was one of enablement. The issue argued at trial may not have been viable in view of Engel Industries v. Lockformer, 20 USPQ2d 1300, 1304 (CAFC 1991): "The enablement requirement is met, however, if the description enables any mode of making and using the claimed invention." A written description issue might be present.
n5 In the context of possible money from the deal going to BT scientists, Kevin Rivette (author of Rembrandt in the Attic) was quoted as saying: "Researchers don't do what they do for money. They have a different DNA from you and me." [in The Economist, Jan. 19, 2002 edition] One recalls however the quote by ED Southern, of Southern blotting fame ("I'm learning from my mistakes." in L. B. Ebert, "Rosalind Reprised," IPT, p. 5 (July 1997)). Rivette was separately quoted in Ziff Davis Smart Business, 15 (1), p. 22 (Jan. 1, 2002): "Whether or not a business plan actually works is not an indicator of the value of the technology." In the meantime, both Nancy Lambert and Greg Aharonian have noted potential problems at Aurigin, and there was a report of a memo announcing Rivette's resignation from Aurigin in January.
n6 PTCJ, Volume 63 Number 1558, (Friday, February 1, 2002)
n7Greg Saitz, Newhouse News Service, "Inventor squares of with employer; case part of debate over who owns ideas." The Times-Picayune (New Orleans), p. 3 (Jan. 10, 2002). Mr. Knecht had worked for 17 years for Mars, but was fired over the dispute.