Federal Circuit Holds That Using A Contract Manufacturer Does Not Trigger An On-Sale Bar

In The Medicines Co. v. Hospira, Inc., Appeal Nos. 2014-1469, -1504, the Federal Circuit, en banc, held that the patentee’s deal for pharmaceutical manufacturing services did not trigger an on-sale bar under 35 U.S.C. § 102(b).

The Medicines Co. (“MedCo”) contracted with Ben Venue to manufacture commercial quantities of Angiomax, a product that practiced the claims of MedCo’s asserted patents.  The district court found that this arrangement did not trigger the on-sale bar under § 102(b).  Hospira appealed.  On appeal, a Federal Circuit panel reversed, finding that the on-sale bar was triggered.  MedCo requested en banc review, which was granted.

The Federal Circuit, en banc, considered the on-sale bar issue in view of the Supreme Court’s guidance in Pfaff v. Wells Electronics, Inc.  There, the Supreme Court held that an on-sale bar applies when, before the critical date, the claimed invention (1) was the subject of a commercial offer for sale; and (2) was ready for patenting.  Under the first prong of Pfaff, the en banc panel determined that there was no invalidating sale.  Ben Venue, as a contract manufacturer, acted as a pair of “laboratory hands.”  That both MedCo and Ben Venue received commercial benefit by their arrangement was not enough to trigger the on-sale bar.  The absence of title transfer and the confidential nature of the transactions weighed against the conclusion that the transactions were commercial.

Federal Circuit Finds Personal Jurisdiction Over A Foreign Company Shipping Products To A U.S.-Based Affiliate

In Polar Electro Oy v. Suunto Oy, Appeal No. 2015-1930, the Federal Circuit held that Suunto’s activities satisfied the minimum contacts requirements for personal jurisdiction in Delaware because Suunto shipped products to Delaware fully expecting they would be sold in Delaware. 

Suunto is a Finnish company that manufactures heart-rate monitors.  Suunto’s sister company, ASWO, distributes Suunto’s products in the United States pursuant to a distribution agreement.  Under the agreement, Suunto is obligated to ship its products to the addresses in the United States specified by ASWO. 

Polar asserted a stream-of-commerce theory of personal jurisdiction based on Suunto’s shipment of products to customers in Delaware.  Suunto shipped at least ninety-four accused products to Delaware retailers via its distribution agreement with ASWO.  Thus, the Federal Circuit found that Suunto, through its own conduct, had purposely availed itself of the Delaware market.

The Federal Circuit agreed with the district court that the “dual jurisdiction theory” under Delaware’s long arm statute authorized jurisdiction.  The Federal Circuit relied on its earlier precedent to uphold the district court’s ruling that Polar had shown both (1) intent or purpose to serve the Delaware market and (2) that the intent or purpose resulted in the introduction of a product to Delaware from which Polar’s case arose.  The Federal Circuit followed Delaware state court precedent to determine that a dual jurisdiction theory under the Delaware long arm statute does not require an assertion of general jurisdiction.

The Phrase, “The Present Invention” Does Not Necessarily Lead To A Disclaimer Of Claim Scope

In Unwired Planet, LLC v. Apple Inc., Appeal No. 2015-1725, the Federal Circuit reversed a district court’s claim construction, finding that the district court erred in finding that the patent specification contained a clear and unmistakable disclaimer.

The district court based its claim construction of the “voice input” term on an alleged disclaimer in the Summary section of the specification.  The Summary section began with the phrase “the present invention” and the next sentence recited a “voice channel,” which the district court read into its claim construction for “voice input.”  Unwired Planet appealed.

On appeal, the Federal Circuit declined to find a disclaimer, explaining that the phrase “the present invention” was not clearly and unmistakably linked to a particular feature and claim differentiation supported a conclusion that the feature was not always part of the invention. The Federal Circuit therefore vacated a grant of summary judgment of non-infringement premised on the erroneous claim construction.

Federal Circuit Holds That A Claim Term Is In Means-Plus-Function Form, Even Though The Word “Means” Was Not Used

In Advanced Ground Information Sys. Inc. v. Life360, Inc., Appeal No. 2015-1732, the Federal Circuit held that a claim term was governed by 35 U.S.C. § 112, ¶ 6, even though it did not use the word “means.”

Advanced Ground Information Systems (“AGIS”) asserted two patents directed to a cellular communication system that allows multiple cell phone users to monitor others’ locations, which are indicated by various symbols that can be reprogrammed by a network administrator.  Life360 asserted that the claim term “symbol generator” invoked means-plus-function claiming, and that the term was indefinite under § 112, ¶ 2. The district court agreed, finding that AGIS intended to invoke § 112, ¶ 6 without using the word “means.” The parties stipulated that the claims were invalid and AGIS appealed the district court’s indefiniteness decision.

The Federal Circuit found that “symbol generator” was in means-plus-function form.  The court affirmed that the term failed to describe sufficient structure and otherwise recited abstract elements “for” causing actions.  The court also found that the term did not identify a structure by its function, nor did the claims suggest that the term connoted a definite structure.  AGIS’s own expert testified that AGIS coined the term for the purposes of the patents-in-suit, and that it was not used in common parlance or by persons of ordinary skill in the art.  As a result, § 112, ¶ 6 applied to the claims at issue.  

Regarding § 112, ¶ 2, the Federal Circuit agreed with the district court’s determination that the term “symbol generator” was indefinite.  For computer-implemented functions, the specification must disclose an algorithm for performing the claimed function.   Because the specifications did not disclose an algorithm for the “symbol generator” function, the claims were held to be indefinite.