Court Continues Debate on Written- Description Requirement
April 01, 2003
Last Month at the Federal Circuit - May 2003
Judges: Schall (per curiam), Rader (concurring), and Bryson (concurring)
In Moba, B.V. v. Diamond Automation, Inc., No. 01-1063 (Fed. Cir. Apr. 1, 2003), the Federal Circuit reversed the district court’s ruling that Moba, B.V.; Staalkat, B.V.; and FPS Food Processing Systems, Inc. (collectively “FPS”) did not infringe Diamond Automation’s (“Diamond”) U.S. Patent No. 4,519,505 (“the ‘505 patent”), which is directed to egg-processing machinery.
In 1995, FPS filed suit in the United States District Court for the Eastern District of Pennsylvania seeking a DJ that the ‘505 patent and three other patents were invalid and not infringed. Diamond counterclaimed that the patents are valid and infringed. A jury found that those patents were not invalid and not infringed. The district court then denied Diamond’s JMOL motion and entered judgment in favor of Diamond on the validity issues and in favor of FPS on the infringement issues.
On appeal, the Federal Circuit held that no reasonable jury could find that machines sold by FPS and used by its customers do not infringe Diamond’s ‘505 patent. The Court also found that the ‘505 patent was valid. Thus, the Federal Circuit reversed the part of the district court’s decision pertaining to the ‘505 patent and remanded the case back to the district court for a determination of damages for infringement of that patent.
Diamond manufactures and sells high-speed egg-processing machines to sort batches of eggs into different categories by weight and quality. Diamond developed these machines with technology that significantly increased the processing speed for eggs. Diamond obtained various patents covering aspects of that technology, including United States Patent No. 4,519,494 (“the ‘494 patent”) and the ‘505 patent.
The ‘505 patent relates generally to “front end” processing of eggs, while the ‘494 patent relates generally to “back end” processing of eggs. The “front end” process first washes the eggs, then introduces them into a candling station, where they are checked for defects, such as blood spots or cracks. The process then weighs the eggs and a computer stores the information for use in sorting the eggs at a later point. The “back end” process receives the eggs from the “front end” processing and transfers them into an overhead conveyor, which drops off each individual egg based on the information stored in the computer.
Moba, B.V. and Staalkat, B.V. are Dutch companies that also manufacture and sell high-speed eggprocessing machines, such as the Moba Omnia and the Staalkat Selecta. FPS sells Moba’s and Staalkat’s machines in the United States.
The Federal Circuit determined that the district court had allowed the jury to add an additional limitation concerning the sequential performance of the claim steps by failing to instruct the jury whether sequential performance was necessary. The error was significant because the jury ultimately found no infringement. According to the Federal Circuit, there was no alternative basis upon which a reasonable jury could find no infringement. By allowing the jury to import additional limitations into the claims, the district court had fundamentally altered the verdict. Therefore, the Federal Circuit found that because no reasonable jury could find on the record evidence that the method performed by the Moba Omnia does not infringe claim 24 of the ‘505 patent, the district court had erred in not granting JMOL on that issue.
However, with regard to the ‘494 patent, the Federal Circuit found that the evidence supported the jury’s verdict of noninfringement. The Court stated that the Staalkat Selecta performs a different function in a different way to obtain a different result from the language of the claim limitation, so it was not equivalent.
The Federal Circuit remanded for further inquiry on the issue of inducement to infringe, stating that the only intent necessary to meet the requirement of 35 U.S.C. § 271(b) is the intent by FPS to cause the acts that constitute infringement. Since this is a factual inquiry, the Federal Circuit declined to make a determination that no reasonable jury could conclude that FPS did not intend that its customers perform acts that constitute infringement.
The Federal Circuit also determined that the ‘505 patent was not invalid for lack of an adequatewritten description. The Court stated that FPS’s contention that the ‘505 patent does not adequately disclose lifting eggs from a moving conveyor merely revived its noninfringement argument in the cloak of a validity challenge. In the present case, the Court found, one of skill in the art could determine from the specification that the inventor possessed the invention at the time of filing.
In his concurrence, Judge Rader voiced the opinion that the application of the writtendescription standard that has evolved through judge-made law is contrary to the statute and case law, since it applies the written-description doctrine beyond the purpose for which the doctrine was created, namely, priority protection.