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“Near” Is Not Indefinite and Belated Disclosure in Time for Examiner’s Consideration Does Not Render the Patent Unenforceable

June 27, 2007
MacAlpine Ph.D., Jill K.

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Last Month at the Federal Circuit - July 2007

Judges: Lourie (author), Prost, Moore

[Appealed from: S.D. Ohio, Judge Marbley]

In Young v. Lumenis, Inc., No. 06-1455 (Fed. Cir. June 27, 2007), the Federal Circuit reversed the district court’s judgment of invalidity for indefiniteness, holding that the term “near” did not render the claims of U.S. Patent No. 6,502,579 (“the ’579 patent”) indefinite. The Court also reversed the district court’s grant of SJ of unenforceability, holding that no affirmative misrepresentation of material fact occurred and that there was not a failure to timely disclose material information.

William P. Young is the inventor of the ’579 patent, which is directed to a surgical method for removing a claw from a domesticated cat. Young sued Lumenis, Inc. (“Lumenis”) for infringement. Lumenis requested reexamination of the ’579 patent and the PTO rejected the claims in a first office action in view of certain prior art references, including a chapter in a veterinary textbook (“the Fossum Reference”). In response, Young argued that the references did not teach the claimed invention. Meanwhile, in the litigation, the author of the Fossum Reference, Professor Hedlund, provided testimony concerning the Fossum Reference. Lumenis alleged that Young failed to submit Professor Hedlund’s testimony to the PTO and that Young made false statements regarding the Fossum Reference to the PTO in his response to the first office action. Based on these two grounds, Lumenis filed a motion for SJ of unenforceability, asserting that Young engaged in inequitable conduct during the reexamination. After Lumenis filed its SJ motion, but before the PTO issued a second office action, Young submitted Professor Hedlund’s testimony to the PTO.

The district court granted Lumenis’s motion for SJ of unenforceability, finding that Young had committed inequitable conduct because his statements regarding the Fossum Reference to the PTO were misleading in light of Professor Hedlund’s testimony and because he failed to submit her testimony to the PTO. In so doing, the district court rejected Young’s argument that his eventual submission of the testimony to the PTO cured the misconduct. In addition, the district court held that the ’579 patent was invalid for indefiniteness under 35 U.S.C. § 112, ¶ 2, based on the word “near” in the phrase “forming a first circumferential incision in the epidermis near the edge of the ungual crest of the claw.” Relying on Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200 (Fed. Cir. 1991), the district court reasoned that the word “near” was indefinite for failing to distinguish the claimed subject matter from the prior art.

On appeal, the Federal Circuit reversed the district court’s judgment of invalidity, holding that the word “near” did not render the claims of the ’579 patent indefinite. The Court noted that claims are considered indefinite when they are “not amenable to construction or are insolubly ambiguous” and that “[i]ndefiniteness requires a determination whether those skilled in the art would understand what is claimed.” Slip op. at 14. It observed that general principles of claim construction are used to make that determination. Id. Applying these principles, the Court found that the term “near,” as evidenced by the claim language, specification, and drawings, had its ordinary and customary meaning of “close to or at the edge” and was not “insolubly ambiguous.” See id. at 17. The Court noted that, unlike Amgen, the intrinsic evidence here provided guidance on the meaning of the term “near” and that the term “near” had not been inserted in the claims in order to overcome the prior art. The Court explained that “[w]hen intrinsic evidence resolves the claim construction, a term is not ‘insolubly ambiguous,’ and thus reference to the prior art is not needed.” Id.

The Federal Circuit also reversed the district court’s grant of SJ that the ’579 patent was unenforceable, holding that the district court erred in determining that the statements made in response to the first office action were affirmative misrepresentations of material fact and that Young had not failed to timely disclose information to the PTO. With respect to the alleged misrepresentations, the Court found that the statements regarding the Fossum reference, which were allegedly inconsistent with Professor Hedlund’s testimony, were “attorney argument, attempting to distinguish the claims from the prior art, not gross mischaracterizations or unreasonable interpretations” of the Fossum Reference. Id. at 19-20. Because the examiner had the Fossum Reference and “was free to reach his own conclusions and accept or reject Young’s arguments,” those arguments were not affirmative misrepresentations of material fact. Id. at 20.

As for the district court’s conclusion based on the failure to disclose Professor Hedlund’s testimony, the Federal Circuit noted that, because the testimony was submitted “at a time when it could be considered by the examiner,” the duty of disclosure was satisfied. Id. at 19-21. The Court observed that “[t]he essence of the duty of disclosure is to get relevant information before an examiner in time for him to act on it, and that did occur here.” Id. at 21.