IP News

Federal Circuit Reverses Ruling Holding Preambles to Be Claim Limitations

In American Medical Systems, Inc. & Laserscope v. Biolitec, Inc., No. 2009-1323, 2010 U.S. App. LEXIS 19077 (Fed. Cir. Sept. 13, 2010), the Federal Circuit reversed and remanded a district court's decision granting defendant Biolitec's motion for summary judgment of non-infringement with respect to U.S. Patent No. 6,986,764 (“the '764 patent”), holding that the district court erred in finding that the term “photoselective vaporization of tissue” in the preamble of the asserted claims was a limitation.

The '764 patent relates to treatment of Benign Prostatic Hyperplasia (“BPH”), a condition in which growth of the prostate gland restricts the passage of urine out of the bladder and through the urethra. Vaporization, or ablation, of some of the prostate tissue reduces the size of the prostate and can relieve bladder outlet obstructions. As described in the patent, this type of BPH treatment generally involves the insertion of a cytoscope into the urethra, an irrigant such as sterile water, and the application of high intensity laser radiation to the target tissue. The specification of the '764 patent explains that prior art tissue vaporization systems were inefficient since they used longer wavelengths of laser radiation e.g., 1064nm and 2100nm, which resulted in “no selective absorption by blood,” and, as a result, violent tissue disruption and “poor hemostasis” (stoppage of bleeding). The specification of the '764 patent explains that laser radiation at a wavelength of 532 nm “is selectively absorbed by blood, leading to good hemostasis.” The patent notes that prior art techniques were inefficient even at wavelengths of 532nm, and therefore teaches the use of high “volumetric power density” to increase vaporization efficiency and minimize residual coagulation.

Claim 31 is representative of the method claims, and contains the preamble, “A method for photoselective vaporization of tissue, comprising.” The apparatus claims are generally similar. Most independent claims do not contain explicit wavelength limitations, but some dependent claims limit the wavelength range “from about 650 to about 200 nm.”

Plaintiffs American Medical Systems, Inc. and Laserscope brought suit in the U.S. District Court for the District of Massachusetts alleging that Biolitec's Evolve' laser system and method of use infringed certain claims of the '764 patent. The accused product is a laser-powered tissue ablation system that uses radiation having a wavelength of 980 nm. It includes an optical fiber probe for administering the radiation by direct contact with the target tissue.

Following a Markman hearing, the district court construed the preambles of the asserted claims, including “photoselective vaporization of tissue,” as limitations. Specifically, the court construed “photoselective vaporization” to mean “using a wavelength that is highly absorptive in the tissue, while being absorbed only to a negligible degree by water or other irrigant.” In light of this ruling, the court granted Biolitec's motion for summary judgment of non-infringement, reasoning that the Evolve laser system operated at a wavelength (980nm) at which energy is “absorbed to more than a negligible degree by water or other irrigant.”

On appeal, the Federal Circuit reversed and remanded, holding that the preamble language of the asserted claims does not constitute a limitation on the claims. The court offered several reasons for its holding. First, the court reasoned that there is no suggestion in the prosecution history that the inventors added the phrase “photoselective vaporization” in order to distinguish their invention from the prior art. Second, the preamble does not provide a necessary antecedent basis for any other term in the body of the claims. Third, the court reasoned that the descriptor “photoselective” does not embody an essential component of the invention. Rather, the court opined that the term is “simply a descriptive name for the invention that is fully set forth in the body of the claims.” Since some dependent claims recited specific wavelength limitations, the court reasoned that if “photoselective” were deemed independently limiting, it would “either be redundant or in conflict with the specific wavelength range set forth in the body of those claims.” The court rejected Biolitec's argument that the specification limited the invention by discussing the drawback of prior art lasers using longer wavelengths. The court acknowledged that the specification discussed such drawbacks, but reasoned that it fell short of “making clear that the invention does not include a particular feature.”

Judge Timothy B. Dyk dissented, arguing that a “rule recognizing that all preambles are limiting would make better sense and would better serve the interests of all concerned.” Judge Dyk reasoned that the Federal Circuit's prior decisions regarding preambles as limitations were difficult to reconcile and that there is little to be said in favor of allowing an applicant, in the claim drafting process, to include material in the claims that is not binding.

Apple Hit with $625.5 Million Verdict

On Oct. 1, 2010, in Mirror Worlds LLC v. Apple, Inc., No. 6:08-cv-00088-LED (E.D.T.X), a jury awarded plaintiff Mirror Worlds LLC $208.5 million in damages for each of three patents found to be infringed by Apple (for a total of $625.5 million). Docket Entry 409. The jury also found that Apple's infringement was willful.

Mirror Worlds, started by Yale professor David Gelernter, filed suit in March 2008, claiming that Apple's computers, iPhone, iPod and Mac OS X infringed four patents ' U.S. Patent Numbers 6,006,227; 6,638,313; 6,725,427; and 6,768,999 ' relating to document streaming technology.

In August 2010, Judge Leonard Davis had granted Apple's partial motion for summary judgment that the asserted independent claims of one patent were invalid for indefiniteness, but allowed the remaining patents to move forward to trial.

Supreme Court to Hear Patent Inducement Case

On Oct. 12, 2010, the Supreme Court granted certiorari in the case of Global-Tech Appliances, Inc. v. SEB S.A., No. 10-6. The issue the Court will consider is:

Whether the legal standard for the state of mind element of a claim for actively inducing infringement under 35 U.S.C. ' 271(b) is “deliberate indifference of a known risk” that an infringement may occur, as the Court of Appeals for the Federal Circuit held, or “purposeful, culpable expression and conduct” to encourage an infringement as this Court taught in MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 937, 125 S. Ct. 2764, 2780, 162 L. Ed. 2d 781, 801 (2005)?

The case originated in August 1999 when plaintiff SEB S.A. sued defendants Montgomery Ward & Co., Inc., Global-Tech Appliances, Inc. and Pentalpha Enterprises, Ltd. for infringement of U.S. Patent No. 4,995,312 (the “'312 patent”), which claims a deep fryer with an inexpensive plastic outer shell, or skirt. Pentalpha, a Hong Kong corporation and subsidiary of Global-Tech, began selling its accused deep fryers to non-party Sunbeam Products, Inc. in 1997. In developing its deep fryer, Pentalpha purchased one of plaintiff SEB's deep fryers in Hong Kong and copied some of its features.

In 1998, SEB sued Sunbeam in the United States, at which time Pentalpha was notified of the suit. That case ended in a settlement in which Sunbeam agreed to pay SEB $2 million. Pentalpha continued to sell the same deep fryers to non-party Fingerhut Corp. and defendant Montgomery Ward, even after learning of the Sunbeam suit.

Following the close of evidence at trial, Pentalpha moved for judgment as a matter of law that SEB had failed to propound evidence that Pentalpha induced infringement of the '312 patent. The district court noted at the Rule 50(a) motion proceedings that “there is no evidence that [Pentalpha] was aware of [the '312] patent” before April 9, 1998, yet denied Pentalpha's motion and held that a jury could infer specific intent to support SEB's inducement theory.

The jury then found willful infringement, and awarded damages of $4.65 million as a reasonable royalty, with $3.6 million attributable to Sunbeam's sales of Pentalpha's deep fryers, $540,000 to Fingerhut's sales, and $510,000 to Montgomery Ward's sales. Pentalpha renewed its JMOL and moved for a new trial, arguing that SEB did not adequately prove inducement under 35 U.S.C. ' 271(b). The district court denied the motion. The Federal Circuit affirmed, holding that a claim for inducement is viable even where the patentee has not produced direct evidence of actual knowledge, and that the record contains adequate evidence to support a conclusion that Pentalpha deliberately disregarded a known risk that SEB had a protective patent. The court relied in part on the fact that Pentalpha had a patent clearance analysis done by a U.S. patent attorney, but failed to inform that attorney that it had copied an SEB product.

Howard J. Shire is a partner and Matthew Berkowitz is an associate in the New York office of Kenyon & Kenyon LLP.

Federal Circuit Reverses Ruling Holding Preambles to Be Claim Limitations

In American Medical Systems, Inc. & Laserscope v. Biolitec, Inc., No. 2009-1323, 2010 U.S. App. LEXIS 19077 (Fed. Cir. Sept. 13, 2010), the Federal Circuit reversed and remanded a district court's decision granting defendant Biolitec's motion for summary judgment of non-infringement with respect to U.S. Patent No. 6,986,764 (“the '764 patent”), holding that the district court erred in finding that the term “photoselective vaporization of tissue” in the preamble of the asserted claims was a limitation.

The '764 patent relates to treatment of Benign Prostatic Hyperplasia (“BPH”), a condition in which growth of the prostate gland restricts the passage of urine out of the bladder and through the urethra. Vaporization, or ablation, of some of the prostate tissue reduces the size of the prostate and can relieve bladder outlet obstructions. As described in the patent, this type of BPH treatment generally involves the insertion of a cytoscope into the urethra, an irrigant such as sterile water, and the application of high intensity laser radiation to the target tissue. The specification of the '764 patent explains that prior art tissue vaporization systems were inefficient since they used longer wavelengths of laser radiation e.g., 1064nm and 2100nm, which resulted in “no selective absorption by blood,” and, as a result, violent tissue disruption and “poor hemostasis” (stoppage of bleeding). The specification of the '764 patent explains that laser radiation at a wavelength of 532 nm “is selectively absorbed by blood, leading to good hemostasis.” The patent notes that prior art techniques were inefficient even at wavelengths of 532nm, and therefore teaches the use of high “volumetric power density” to increase vaporization efficiency and minimize residual coagulation.

Claim 31 is representative of the method claims, and contains the preamble, “A method for photoselective vaporization of tissue, comprising.” The apparatus claims are generally similar. Most independent claims do not contain explicit wavelength limitations, but some dependent claims limit the wavelength range “from about 650 to about 200 nm.”

Plaintiffs American Medical Systems, Inc. and Laserscope brought suit in the U.S. District Court for the District of Massachusetts alleging that Biolitec's Evolve' laser system and method of use infringed certain claims of the '764 patent. The accused product is a laser-powered tissue ablation system that uses radiation having a wavelength of 980 nm. It includes an optical fiber probe for administering the radiation by direct contact with the target tissue.

Following a Markman hearing, the district court construed the preambles of the asserted claims, including “photoselective vaporization of tissue,” as limitations. Specifically, the court construed “photoselective vaporization” to mean “using a wavelength that is highly absorptive in the tissue, while being absorbed only to a negligible degree by water or other irrigant.” In light of this ruling, the court granted Biolitec's motion for summary judgment of non-infringement, reasoning that the Evolve laser system operated at a wavelength (980nm) at which energy is “absorbed to more than a negligible degree by water or other irrigant.”

On appeal, the Federal Circuit reversed and remanded, holding that the preamble language of the asserted claims does not constitute a limitation on the claims. The court offered several reasons for its holding. First, the court reasoned that there is no suggestion in the prosecution history that the inventors added the phrase “photoselective vaporization” in order to distinguish their invention from the prior art. Second, the preamble does not provide a necessary antecedent basis for any other term in the body of the claims. Third, the court reasoned that the descriptor “photoselective” does not embody an essential component of the invention. Rather, the court opined that the term is “simply a descriptive name for the invention that is fully set forth in the body of the claims.” Since some dependent claims recited specific wavelength limitations, the court reasoned that if “photoselective” were deemed independently limiting, it would “either be redundant or in conflict with the specific wavelength range set forth in the body of those claims.” The court rejected Biolitec's argument that the specification limited the invention by discussing the drawback of prior art lasers using longer wavelengths. The court acknowledged that the specification discussed such drawbacks, but reasoned that it fell short of “making clear that the invention does not include a particular feature.”

Judge Timothy B. Dyk dissented, arguing that a “rule recognizing that all preambles are limiting would make better sense and would better serve the interests of all concerned.” Judge Dyk reasoned that the Federal Circuit's prior decisions regarding preambles as limitations were difficult to reconcile and that there is little to be said in favor of allowing an applicant, in the claim drafting process, to include material in the claims that is not binding.

Apple Hit with $625.5 Million Verdict

On Oct. 1, 2010, in Mirror Worlds LLC v. Apple, Inc., No. 6:08-cv-00088-LED (E.D.T.X), a jury awarded plaintiff Mirror Worlds LLC $208.5 million in damages for each of three patents found to be infringed by Apple (for a total of $625.5 million). Docket Entry 409. The jury also found that Apple's infringement was willful.

Mirror Worlds, started by Yale professor David Gelernter, filed suit in March 2008, claiming that Apple's computers, iPhone, iPod and Mac OS X infringed four patents ' U.S. Patent Numbers 6,006,227; 6,638,313; 6,725,427; and 6,768,999 ' relating to document streaming technology.

In August 2010, Judge Leonard Davis had granted Apple's partial motion for summary judgment that the asserted independent claims of one patent were invalid for indefiniteness, but allowed the remaining patents to move forward to trial.

Supreme Court to Hear Patent Inducement Case

On Oct. 12, 2010, the Supreme Court granted certiorari in the case of Global-Tech Appliances, Inc. v. SEB S.A., No. 10-6. The issue the Court will consider is:

Whether the legal standard for the state of mind element of a claim for actively inducing infringement under 35 U.S.C. ' 271(b) is “deliberate indifference of a known risk” that an infringement may occur, as the Court of Appeals for the Federal Circuit held, or “purposeful, culpable expression and conduct” to encourage an infringement as this Court taught in MGM Studios, Inc. v. Grokster , Ltd., 545 U.S. 913, 937, 125 S. Ct. 2764, 2780, 162 L. Ed. 2d 781, 801 (2005)?

The case originated in August 1999 when plaintiff SEB S.A. sued defendants Montgomery Ward & Co., Inc., Global-Tech Appliances, Inc. and Pentalpha Enterprises, Ltd. for infringement of U.S. Patent No. 4,995,312 (the “'312 patent”), which claims a deep fryer with an inexpensive plastic outer shell, or skirt. Pentalpha, a Hong Kong corporation and subsidiary of Global-Tech, began selling its accused deep fryers to non-party Sunbeam Products, Inc. in 1997. In developing its deep fryer, Pentalpha purchased one of plaintiff SEB's deep fryers in Hong Kong and copied some of its features.

In 1998, SEB sued Sunbeam in the United States, at which time Pentalpha was notified of the suit. That case ended in a settlement in which Sunbeam agreed to pay SEB $2 million. Pentalpha continued to sell the same deep fryers to non-party Fingerhut Corp. and defendant Montgomery Ward, even after learning of the Sunbeam suit.

Following the close of evidence at trial, Pentalpha moved for judgment as a matter of law that SEB had failed to propound evidence that Pentalpha induced infringement of the '312 patent. The district court noted at the Rule 50(a) motion proceedings that “there is no evidence that [Pentalpha] was aware of [the '312] patent” before April 9, 1998, yet denied Pentalpha's motion and held that a jury could infer specific intent to support SEB's inducement theory.

The jury then found willful infringement, and awarded damages of $4.65 million as a reasonable royalty, with $3.6 million attributable to Sunbeam's sales of Pentalpha's deep fryers, $540,000 to Fingerhut's sales, and $510,000 to Montgomery Ward's sales. Pentalpha renewed its JMOL and moved for a new trial, arguing that SEB did not adequately prove inducement under 35 U.S.C. ' 271(b). The district court denied the motion. The Federal Circuit affirmed, holding that a claim for inducement is viable even where the patentee has not produced direct evidence of actual knowledge, and that the record contains adequate evidence to support a conclusion that Pentalpha deliberately disregarded a known risk that SEB had a protective patent. The court relied in part on the fact that Pentalpha had a patent clearance analysis done by a U.S. patent attorney, but failed to inform that attorney that it had copied an SEB product.

Howard J. Shire is a partner and Matthew Berkowitz is an associate in the New York office of Kenyon & Kenyon LLP.