Our weekly SoCal IP Institute meeting on Monday, November 24, 2014 will be a discussion of two Federal Circuit cases — one involving the applicability of collateral estoppel and the other involving the “original patent” requirement for reissue patents.
E.Digital Corp. v. Futurewei Tech’s., Inc.., Case No. 2014-1019 (Fed. Cir. November 17, 2014) (available here). E.Digital previously sued another entity in Colorado on one of the same patents asserted in this case. The asserted ‘774 patent claims a system in which audio recording and playback is enabled in a device including a microphone and exchangeable flash memory. The prior court found that the claim’s “memory” limitation was construed to require flash memory and to explicitly exclude RAM memory. In addition, the court addressed E.Digital’s argument that RAM is used in conjunction with a microprocessor by stating that the flash memory could be used with the microprocessor in place of RAM memory. Shortly thereafter, E.Digital agreed to a stipulated dismissal of that case.
Here E.Digital asserted the same patent and an unrelated, but similar subject matter, patent against the GoPro camera and similar devices from other manufacturers. At this point, the patent asserted in the earlier case had been reexamined, at the request of the patent owner, and claim limitations expressly claiming a microprocessor were added to the patent. The district court found that collateral estoppel regarding claim construction applied to both the earlier patent and the patent for the first time asserted in this case. The court initially agreed to stay the case after a partial summary judgment of non-infringement and, upon request by Apple, converted the partial summary judgement into a full summary judgement so that the appeals could be heard simultaneously.
The Federal Circuit reversed the collateral estoppel decision with regard to the newly-asserted patent because it was unrelated, did not share a specification, and was not the “same issue litigated” in the earlier case. Thus, the case was remanded at least with regard to the newly-asserted patent. The collateral estoppel decision with regard to the original patent (the ‘774 patent) was affirmed and the Federal Circuit pointed out that the Colorado court already considered the newly-added “microprocessor” limitation and still rendered its construction nonetheless. Thus collateral estoppel applied. Finally, the Federal Circuit found that the conversion of a partial summary judgment to final summary judgment was not an abuse of discretion because it was intended to enable the appeals on the same patents to be heard simultaneously.
Antares Pharma, Inc. v. Medac Pharma, Inc. et al., Case No. 2014-1648 (Fed. Cir. November 13, 2014) (available here). Antares asserted a reissue patent against Medac after Medac filed an 505(b)(2) NDA indicating that it intended to begin selling a housing for a jet injector. The patent, as originally issued, covered a system for injecting medication including “jet injectors.” The prior art was primarily overcome on the basis that the prior art did not disclose the “jet injectors” of the claims. Antares sought reissue of the patent within the prescribed 2 years, such that Antares was entitled to complete a so-called broadening reissue seeking a broader scope of the patent. Here, they sought claims that did not require any “jet injectors” and, indeed, were directed to different subject matter including safety mechanisms associated with the injection system. Antares admitted that these claims were to a different invention altogether.
The district court in Delaware found, on a motion for a preliminary injunction, that the patent claims directed to the safety mechanisms were invalid as violating the recapture rule–namely, claiming subject matter in a reissue application that was explicitly disclaimed in prosecution. The Federal Circuit declined to reach that issue on appeal. Instead, the Federal Circuit focused on the “original patent” requirement in the 1952 Patent Act that requires any reissue claims to claim the “same invention” or, as set forth in the current Patent Act, the “invention disclosed in the original patent.” This standard was primarily set forth in the Industrial Chemicals case. In short, one cannot through reissue obtain protection of a different invention from that in the originally-issued claims.
Here, based upon Antares admission and the clear distinction between the two claim sets, the Federal Circuit affirmed, on different basis, that the claims are invalid for failure to confirm to the original patent requirement of 35 U.S.C. 251.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, November 24, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.