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Court Vacates Finding of Inherent Anticipation

July 02, 2002

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Last Month at the Federal Circuit - August 2002

Judges: Rader (author), Mayer, and Gajarsa

In Trintec Industries, Inc. v. Top-U.S.A. Corp., No. 01- 1568 (Fed. Cir. July 2, 2002), the Federal Circuit vacated the district court’s finding that U.S. Patent No. 5,818,717 (“the ‘717 patent”) was invalid as inherently anticipated and remanded the case for further proceedings on the issue of obviousness.

Trintec Industries, Inc. (“Trintec”) owns the ‘717 patent, which claims a cost-effective method for producing, in low volume, multicolor faces for watches, clocks, thermometers, and other instruments. Claim 3 of the ‘717 patent discloses a method for constructing such instrument faces using a computer and a color photocopier. Claim 8 discloses another method wherein such instrument faces are “created” in a computer.

Trintec sued Top-U.S.A. Corporation (“Top-U.S.A.”), claiming that Top-U.S.A. infringed, inter alia, claims 3 and 8 of the ‘717 patent. Top-U.S.A. had been using highresolution color printing to create custom watches and clocks for several years. In the district court, Trintec moved for SJ of infringement, intentional infringement, and validity. Top-U.S.A. moved for SJ of invalidity, contending that the asserted claims were anticipated or obvious in view of a catalogue published by Sweda Company LLC (“Sweda”) before the filing of the ‘717 patent. The Sweda catalogue advertised inexpensive, small-volume, multicolor watches that were produced by a computer laser printer. Although Top-U.S.A. conceded that the Sweda catalogue did not expressly teach all elements of the asserted claims, it contended that the catalogue inherently anticipated all elements of the asserted claims. The district court agreed with Top-U.S.A. and granted SJ of invalidity.

In construing claim 3 of the ‘717 patent, the district court construed the “color photocopier” limitation to mean a “color printer.” On appeal, however, the Federal Circuit found that a “color photocopier” must have the ability to both print and photocopy subject matter in color. As such, the disclosure of “a new computer laser printer” in the Sweda catalogue did not expressly or inherently anticipate a color photocopier. Citing the strict identity required of the test for novelty, the Federal Circuit found that claim 3 was not anticipated by the Sweda cat alogue, regardless of how obvious the difference may seem.

Claim 8 of the ‘717 patent discloses “creating [an] instrument face . . . in [a] computer in electronic format.” The district court interpreted the “creating” language to mean both “creating or providing,” so as to encompass “providing” unmodified input from a scanner or CD ROM for the instrument face. Again, the Federal Circuit disagreed with the district court’s claim construction. In particular, the Court found that “creating” required more than simply using a computer as a conduit to convey information to a printer from a scanner or CD ROM. The Court additionally found that “creating” would require substantive addition or modification to artwork stored in a computer. Noting that none of the printing methods disclosed by the Sweda catalogue discussed the creation of artwork in a computer, the Federal Circuit found that the Sweda catalogue did not inherently or expressly anticipate claim 8.

The Court observed that obviousness, and not anticipation, seemed to be the actual issue of this case. Because the record was not fully developed on the issue of obviousness, however, the Court remanded for further proceedings.