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District Court Failed to Construe Claims Before Invalidating Them

February 08, 2002

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Last Month at the Federal Circuit - March 2002

Judges: Lourie (author), Clevenger, and Gajarsa

In Dana Corp. v. American Axle & Manufacturing, Inc., No. 01-1008 (Fed. Cir. Feb. 12, 2002), the Federal Circuit vacated a district court’s grant of SJ of invalidity under the public use and on-sale bars of 35 U.S.C. § 102(b) because the district court had failed to properly construe claims and evaluate them in view of the asserted public use and sales activities.

The patents at issue are directed to swaged vehicle driveshafts with a diameter-reducing portion “having a substantially uniform wall thickness.” Dana Corporation (“Dana”) as well as American Axle & Manufacturing, Inc.’s (“AAM”) predecessor, the Saginaw Division of General Motors (“Saginaw”), developed, used, and sold various driveshafts prior to the critical dates. Accordingly, AAM moved for SJ of invalidity based on Saginaw’s and Dana’s public use and sales activities.

The district court granted AAM’s motion without fully and independently construing the claims, determining that Saginaw’s metal matrix composite (“MMC”) driveshaft was offered for sale and in public use before the critical dates of both patents and, therefore, served as a basis for invalidating all of the claims under § 102(b). The district court also had concluded that Dana’s own activities constituted an on-sale bar, finding that a Dana prototype was disclosed and offered for sale before the critical dates.

On appeal, the Federal Circuit rejected AAM’s position that the district court had properly performed its duty to construe the claims by adopting Dana’s proposed construction of the only disputed limitation, “substantially uniform wall thickness,” concluding that the adoption of a patentee’s claim construction does not constitute a concession of the correctness of the application of those claims to the alleged invalidating acts.

In the absence of a proper claim construction and the application of the construed claims to the alleged prior invalidating acts, SJ of invalidity was wrongly granted. Accordingly, the Court vacated the SJ of invalidity with instructions for the district court to fully construe the claims and evaluate whether there are genuine issues concerning the differences between the claims and the subjects of the alleged bars.