In Dow v. Sumitomo, 00-1441, the Federal Circuit dealt with issues of claim construction, infringement, and estoppel. The case concerned alleged infringement by Sumitomo of Dow's US 4,499,255, concerning a process to make high purity (novolac) resins for use on chips.
Of claim construction, there was an issue of how to measure the boiling point of a mixture. The Federal Circuit observed:
We start with the proposition that the boiling point of a codistillate must be given its ordinary meaning as understood by one of ordinary skill in the art. Interactive Gift, 2001 WL 792669 at 7; Hockerson-Halberstadt, 222 F.3d at 955, 55 USPQ2d at 1490. In determining whether the codistillate boiling point is properly measured in the vapor phase or in the reaction mixture, we are free to consult technical treatises so long as such treatises do not contradict any definition found in or ascertained by a reading of the intrinsic evidence. Interactive Gift, 2001 WL 792669 at 6 n.1; Vitronics, 90 F.3d at 1584 n.6, 39 USPQ2d at 1578 n.6.
Further, in this case, the construction of the district court would have excluded certain examples. The Federal Circuit noted:
It is axiomatic that "[claims], not the specification embodiments, define the scope of protection." American Permahedge, Inc. v. Barcana, Inc., 105 F.3d 1441, 1444, 41 USPQ2d 1614, 1617 (Fed. Cir. 1997). However, it is also well established that a claim construction that excludes a preferred embodiment is "rarely, if ever, correct." Vitronics, 90 F.3d at 1583, 39 USPQ2d at 1578 (emphasis added); see also Interactive Gift, 2001 WL 792669 at 19. This is because "it is unlikely that an inventor would define the invention in a way that excluded the preferred embodiment, or that persons of skill in this field would read the specification in such a way." Hoechst Celanese Corp. v. BP Chem. Ltd., 78 F.3d 1575, 1581, 38 USPQ2d 1126, 1130 (Fed. Cir. 1996).
Of infringement, there was an issue of "additional modifications" in the process. The Federal Circuit noted of the district court's reliance on Amstar:
In so holding, the district court relied on language from our decision in Amstar Corp. v. Envirotech Corp., 730 F.2d 1476, 1483, 221 USPQ 649, 654 (Fed. Cir. 1984). In Amstar, we stated that an accused product did not escape infringement simply because it contained additional modifications and "merely colorable variations" in addition to the claimed limitations. Id. at 1483, 221 USPQ at 654. This language used in Amstar simply recognized that the accused product in that case was "the same" as the claimed invention and already contained the claimed limitations. Id. at 1483-84, 221 USPQ at 653-54. This language does not alter the well-established principle that the "mere addition of elements [in the accused product or process] cannot negate infringement." Id. at 1482, 221 USPQ at 653.
The Federal Circuit in Dow made much of the open-ended "comprising" language of the method claim in question. n2 One notes the method claim at issue in Insituform v. Cat Contracting, 99 F.3d 1098, 1104, 40 USPQ2d 1602 (CAFC 1996) also used "comprising" language. Step 3 of the method claim in Insituform recited "a cup," yet, the accused infringer escaped infringement by using more than one cup, presumptively because multiple cups destroyed the inherent property of the one cup system of a "discontinuous" vacuum. 99 F.3d at 1106. Thus, under this view, added steps (or elements) can escape infringement if they change an inherent feature of the claimed invention, which view is a type of "reverse doctrine of equivalents" approach.
Of argument-based prosecution history estoppel (an issue of relevance in the Festo age), the court noted:
Where a patentee disputes an examiner's statement on the record, and makes no amendment based on the examiner's statement, such statement usually would not be construed as a basis for argument-based prosecution history estoppel. ( . . . ) Thus, Dow's statements do not evince the "clear and unmistakable surrender of subject matter" necessary to invoke argument-based prosecution history estoppel. Pharmacia & Upjohn Co. v. Mylan Pharms., Inc., 170 F.3d 1373, 1377, 50 USPQ2d 1033, 1036 (Fed. Cir. 1999).
PROZAC
In August n3, Barr Laboratories won approval to market a 20 mg generic capsule of PROZAC, which dosage has accounted for $ 2.2 billion of Lilly's annual $ 2.7 billion sales of the drug. Dr. Reddy's Laboratories of India was cleared to market a 40 mg capsule; a news release from Dr. Reddy's states that it is the first Indian company to receive a 180 day period of marketing exclusivity in the U.S. market (under the Hatch-Waxman Act).
DICKENS AND COPYRIGHT
Law professor David Post was a hit at the MP3 Summit in San Diego in July with his analogy to Charles Dickens and the bottom line message that consumers themselves need to understand that fair compensation for intellectual property is in their best interests. One still needs to sort out compensation between authors and publishers.
CHANGING TIMES?
Lucent is implementing a "phase II" restructuring, which will have reduced its workforce from 155,000 a year ago to about 60,000. n4 Earlier, in 1999, the Newark Star-Ledger discussed performance based issues:
Lucent Technologies wants more of its "lowest performers" to either leave or do the "RUMBA."
Workers who don't measure up can be put into a so-called performance improvement plan. They are given performance goals that are "reasonable, understandable, measurable, believable and achievable," or RUMBA, according to internal company documents. If they don't RUMBA well enough, employees say, they could dance right out the door. A Lucent spokesman was quoted: "There are going to be some job reductions in a few business units." [Joseph R. Perone, "Lucent to step up job cuts," Newark Star-Ledger, B27 (Oct. 13, 1999)]
In law firms, and other places, there is some motivation to distinguish between a culling of poor performers and layoffs driven by economic factors separate from the employees. n5 Sometimes the size of the reduction is taken as a proxy for the kind of reduction (small/culling; large/layoff).
In and around April, 1986, Exxon reduced some of its research areas by about 50%. n6 Unlike what typically happens at law firms, this was a "cross-the-board" reduction, with approximately half the personnel at each level removed. In a law firm context, it would be as if half the senior partners, half the partners, and half the associates were removed, rather than a removal of all of the associates. Although arguably a large reduction, it was purportedly done based on (some) performance factors. n7
Roberta Morris wrote an "open letter" to the U.S. Supreme Court in 83 JPTOS 438 (June, 2001). Therein, she criticized certain text in the decision in Warner-Jenkinson v. Hilton Davis, 520 U.S. 17 (1997). Significantly, some of the text she questioned (especially footnote 6 and also a "requested change") is of great relevance to present arguments in the Supreme Court review of Festo, 234 F.3d 558 (CAFC 2000) [See L. B. Ebert, "Festo: the coming storm?, Int. Prop. Today, pp. 48-49 (Aug. 2001); separately, as a nanopoint, one observes that one justice in oral argument in Warner-Jenkinson fully understood the meaning of the PTO "requested change" as to pH.] The Morris letter raises issues as to the appropriate level of abstraction to undertake Festo, and, to what extent text such as in footnote 6 will play a role in the ultimate Festo decision. Separately, in the Zurko case, on remand from the Supreme Court (527 U.S. 150 (1999)), the CAFC still reversed the Board, so that the result was the same under the "substantial evidence" standard as it was under the "clearly erroneous" standard.
IN PASSING
Mr. Peters, of the case Peters v. Township of Hopewell, 534 F. Supp. 1324 (D. N.J. 1982), died in July 2001. [Lisa Coryell, "Titusville iconclast Carl Peters, 76, dies," Trenton Times, A3 (July 24, 2001).] A handwritten sign, quantifying the number of things removed, was still on his property. The image of Peters, swinging a jack to protect his "junk" cars from being bull-dozed, has to be one of the more vivid of F. Supp. n8 What analogous picture do we have for a patentee fighting infringers?
ENDNOTES
n1 The opinions expressed are those of the author and not of any employer, past, present, or future. The author may be reached at Lebert@ReedSmith.com, ebert@lawyer.com, ebert@prodigy.net, or 609-514-5951. Following a trip to the emergency room on August 5, the author's planned topic for September (concerning Richter Gedeon's infringement lawsuits over its patents to famotidine polymorphs, which are monoclinic -- phase A: a = 11.978 A, b = 7.196, c = 16.812, beta = 99.8; phase B: a = 17.762, b = 5.329, c = 18.307, beta = 123.6) will be deferred. See L. B. Ebert, "Reverse Doctrine of Equivalents: Infringement Defense as to Drug Polymorphs?" Int. Prop. Today, pp. 26-27 (Feb. 2001). One notes that the volumes of the two monoclinic cells are within 1% of one another.
n2 The Dow court stated: Thus, an accused method "does not avoid literally infringing a method claim . . . simply because it employs additional steps." Id. (emphasis in original); see also Vivid Tech., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 811, 53 USPQ2d 1289, 1301 (Fed. Cir. 1999) ("[A claim using] the signal 'comprising' . . . is generally understood to signify that the claims do not exclude the presence in the accused apparatus or method of factors in addition to those explicitly recited"); Phillips Petroleum Co. v. Huntsman Polymers Corp., 157 F.3d 866, 874, 48 USPQ2d 1161, 1167 (Fed. Cir. 1998) ("The use of . . . 'which comprises' in the composition and process claims generally would mean that the claims require [the recited limitations], but that additional elements or process steps may be present."); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) ("'Comprising' is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.").
n3 The six-month pediatric exclusivity of Lilly expired on August 2, 2001. The final judgment of the district court was issued July 27, 2001. Dr. Reddy's has filed paragraph IV certifications on 40 mg omeprazole, 100 mg ciprofloxacin, and 20 mg olanzapine.
n4 "The New Lucent," TheStandard.com (Aug. 2, 2001); also, Andrew Jacobs, "This Time, Prospect of Pink Slips Makes Workers Grim at Lucent," New York Times, July 26, 2001.
n5 Amy Fantini, "The Disappeared," The American Lawyer (April 10, 2001; presumably a take-off on Los Desaparecidos of Argentina). See also various postings at vault.com, including one of August 7: "Laid off? Tell us about it! Take the pink slip survey."
n6 John Walsh, "Oil industry R&D takes a fall; Exxon's corporate research operation cut in half as oil companies "downsize" to adjust to market," Science, 1986, 232, 1593 [June 27, 1986]. As a minor footnote to the 1986 terminations, persons who were definitely staying were referred to as "whites" and persons who were removed were referred to as "blacks," while tweeners were termed "grays." Also, "Exxon's Future," Business Week, pp. 72, 75 (April 2, 1990) ("[Exxon's research] budgets have been cut in half.") and "Despite cuts, basic research survives and revives at Exxon," Physics Today, pp. 59-60 (July 1987) ([terminations of 1986 based on] "perceived merit.")
n7 There is an interrelation of the downsizing to the case "In the matter of Exxon Chemical Company on behalf of Ghazi Dickakian," 87-INA-615 (see also IPT, pp. 22-23 (April 2001)), which concerned the interpretation of 20 CFR 656.21(b)(7). The job in question was advertised, without identification of Exxon (i.e., blindly) but not posted within Exxon, during the time of the 50% layoff. In hindsight, in August 2001, one notes that Dickakian is an inventor or co-inventor on 44 issued U.S. patents, per the USPTO database. Most of the recent patents do not pertain to coke chemistry.
n8 See L. B. Ebert, "You Can't Know It When You Can't See It," Int. Prop. Today, pp. 22-23 (April 2001).