Work-Product Immunity for Patent Holding Co.

After an in camera review, Judge Ward holds that documents a patent-holding company shared with potential investors, under a non-disclosure agreement, to secure funding for litigating and licensing an acquired patent were protected under work-product immunity.  The court explaining: “Some documents reveal Inpro’s overall litigation and licensing strategy and others provide information—such as balance sheets including licensing and litigation revenues—that show the implementation of that strategy.  All of the documents were prepared, however, with the intention of coordinating potential investors to aid in future possible litigation.  The Court holds that these documents are protected by the work product protection.”   Mondis Technology, Ltd. v. LG Elecs., Inc., Nos. 2:07-CV-565-TJW-CE, 2:08-CV-478-TJW, 2011 WL 1714304, *2-*3 (E.D. Tex. May 4, 2011).  For additional discussion and case authority on this topic see Annotated Patent Digest § 42:41.50 Patentee and Financiers of the Litigation; and § 42:161 Prepared in Anticipation of Litigation.

Refusing to Read into Claim a Requirement of FDA Approval

Court rejects contention that a claim to drug composition that was useful to treat an aliment had to meet FDA standards for approval.  The court concluded that because “FDA approval is irrelevant to proceedings before the Patent and Trademark Office” it would not read into the claims the suggested requirement of FDA approval to find that the treatment was useful.  Allergan, Inc. v. Sandoz Inc., 2011 WL 1599049, *8-*10 (E.D. Tex. Apr. 27, 2011).  For additional discussion and case authority on this topic see Annotated Patent Digest § 4:192 “Treat” and § 1:8 Patent Rights do Not Trump State or Federal Regulatory Prohibitions.

False Marking Relator has a Right to a Jury Trial

Ruling that because a qui tam action under § 292(b) seeks a legal remedy, in view of the monetary penalty, a Seventh Amendment right to a jury trial applies.  U.S. ex rel. Hallstrom v. Aqua Flora, Inc., No. CIV S-10-1459 KJM-EFB, 2011 WL 1668984, *2-*3 (E.D. Cal. May 3, 2011). For additional discussion and case authority on right to jury trials see Annotated Patent Digest § 39:135 Supreme Court Cases Addressing Right to Jury Trial.

On numerous occasions the Federal Circuit has found that a statement in the specification describing the “present invention” as having a certain characteristic can operate to limit the scope of the claims.  Indeed, the court has instructed that “[w]hen a patent thus describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.”  Verizon Service Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007). 

The key to properly applying this legal principle requires determining whether the “present invention” statement truly describes the invention as a whole, or whether it merely describes one preferred embodiment.  As shown by the recent district court opinion in LG Elecs. U.S.A., Inc. v. Whirlpool Corp., 2011 WL 1560592, *14 (D.N.J. Apr. 25, 2011), not all “present invention” statements will limit claim scope. 

In LG, the court determined that a “present invention” statement did not limit claim scope because the statement merely referred to one preferred embodiment, not the entire invention.  Specifically, the court held that a statement reciting “the structure for supplying water to the dispenser and the icemaker, according to the present invention will be described with reference to Fig. 6,” did not describe the entire invention, but only described one particular embodiment, and therefore did not limit the scope of the claim.

Differences of opinion may exist as to whether a statement referring to patent figures, as the one in LG, does or does not refer to the invention as a whole.  But the legal principle that “present invention” statements do not limit claims if they only refer to a preferred embodiment, and not the whole invention, has strong judicial support especially where other portions of the specification describe the invention more broadly.   E.g., Sanders v. The Mosaic Co., No. 2010-1418, 2011 WL 1491248, *2-*3 (Fed. Cir. Apr. 20, 2011) (nonprecedential).

For additional discussion and case authority on this topic see Annotated Patent Digest § 5:17.50 “Present Invention” or “The Invention” Statements.  See also Annotated Patent Digest § 5:58 Explicit Statements Limiting Scope of Claimed Invention.