A settlement agreement that includes a patent license to certain patents and that contains a forum selection clause covering disputes “relating to or arising out of” the settlement agreement controls the available choice of forum for allegations of infringement of patents that are continuations of the patents covered by the license.

General Protecht Group, Inc., G-Techt Global Corporation, Securelectric Corporation, and Warehouse-Lighting.com, LLC, and Central Purchasing, LLC and Harbor Freight Tools USA, Inc. v. Leviton Manufacturing Co., Inc., No. 2011-1115 (Fed. Cir. July 8, 2011).

Previously, the patentee and the alleged infringer had settled allegations of patent infringement.  The settlement agreement included a forum selection clause that all disputes “relating to or arising out of” the settlement agreement would be resolved by the court in the District of New Mexico.  The patentee sued the alleged infringer for infringement of patents, which were continuations of the patents in the settlement agreement.  The patentee brought its suits for infringement before the International Trade Commission (“ITC”) and the Northern District of California.  In response, the alleged infringer filed a declaratory judgment action in the District of New Mexico and requested a preliminary injunction against the patentee’s pending suits.  The district court granted the preliminary injunction and enjoined the patentee’s suits before the ITC and the Northern District of California.  On expedited review, the Federal Circuit affirmed.

Applying its own procedural law, the court explained that the district court did not abuse its discretion in granting the preliminary injunction.  On the likelihood of success on the merits, “patent disputes do arise from license agreements.”  Unless the governing law provisions of a license are limited to specific license terms, the license necessarily covers patent infringement disputes.  In this case, the dispute involves the scope of the settlement agreement, and under the broad “relating to or arising out of” language of the forum selection clause, this dispute is covered by the forum selection clause.  Further on the likelihood of success on the merits, the alleged infringer likely possessed an implied license because, as in TransCore, a patent licensor cannot “tak[e] back in any extent that for which [it] has already received consideration,” and absent clear indication of mutual intent to the contrary, continuations of parent patents are impliedly licensed under the previous agreement. 

Finally, the court agreed that additional factors – irreparable harm to the accused infringer, the balance of hardships, and the public interest – all favored entering the preliminary injunction. 

A copy of the opinion can be found here.

A patentee may defeat a presumption of prosecution history estoppel by showing that use of the element at issue in the accused infringing product was not foreseeable in the field of the invention at the time of the patentee's narrowing amendment.

Teva Women's Health, Inc. v. Paddock Laboratories, Inc., No. 2010-1419 (Fed. Cir. July 21, 2011).

The district court granted the accused infringer’s motion for summary judgment of noninfringement.  The Federal Circuit upheld the district court’s decision holding that the patentee did not overcome the presumption of prosecution history estoppel because it failed to show that use of the element at issue of the accused infringer’s product was unforeseeable at the time of the amendment to the patent claim.

The patent at issue claimed certain conjugated estrogen pharmaceutical compounds designed to help prevent degradation.  The claimed conjugated estrogens are extremely water-sensitive and susceptible to moisture degradation during storage.  The patentee developed a formulation of the invention that included a moisture barrier coating (“MBC”) to overcome this issue.  During prosecution, the patentee narrowed the independent claim of the patent to cover the composition with an MBC comprising ethylcellulose.  The patentee argued that the alleged infringer’s MBC formulation was unforeseeable and thus, prosecution history estoppel did not apply.  The district court held that the accused infringer’s MBC formulation was foreseeable and the patentee’s amendment barred it from claiming that the accused infringer’s product, which did not use an MBC comprising ethylcellulose, infringed its claims.

The Federal Circuit upheld the district court’s decision.  It ruled that the use of the alternative MBC in the alleged infringer’s compound was foreseeable, thus, the patentee could not use that argument to overcome the presumption of prosecution history estoppel.  The patentee was barred from asserting its infringement claim.

A copy of the opinion can be found here.

The Federal Circuit upheld the BPAI’s interpretation of 37 C.F.R. § 41.37 to require more substantive arguments in an appeal brief regarding the separate patentability of dependent claims than a mere recitation of the additional claim elements and a naked assertion that corresponding elements are not found in the prior art.

In re Lovin, No. 2010-1499 (Fed. Cir. July 22, 2011).

After the patent examiner’s rejection of the claims of an application for obviousness, the applicant appealed to the Board of Patent Appeals and Interferences (“BPAI”).  In the appeal brief, the applicant tried to address the separate patentability of each of the dependent claims by listing each claim under a separate subheading with a separate section for arguments.  However, with respect to the additional elements of the dependent claims, the applicant simply asserted that these elements were not present in the prior art and asserted non-obviousness over the combined teachings of the prior art.  The BPAI affirmed the examiner’s rejection of all the dependent claims, interpreting  37 C.F.R. § 41.37(c)(1)(vii) to require an applicant to do more than point out the differences in what the claims cover to argue the separate patentability of the claims.  The Federal Circuit affirmed.

On appeal, the applicant argued that the only requirement for substantive argumentation for dependent claims under Rule 41.37 is to point out the essential elements as compared with prior claims and the inapplicability of the cited references, which had previously been discussed in the applicant’s brief.  The applicant based his argument on Federal Circuit precedent which reversed a similar rejection.  The Federal Circuit disagreed. 

It noted that it could only reverse the U.S. Patent and Trademark Office’s (“PTO’s”) interpretation of its own regulations if the interpretation is plainly erroneous or inconsistent with the regulation or if a previous judicial opinion unambiguously foreclosed that interpretation.  The Federal Circuit found that the BPAI’s interpretation of Rule 41.37 was reasonable.  The Federal Circuit also found that its precedent did not unambiguously foreclose the PTO’s interpretation, as the version of Rule 41.37 (in place at the time of the earlier opinion) did not have the very language which was later added to make stronger requirements for separate patentability.  Because the pertinent language in the current version of the rule was not before the court in the earlier opinion, that opinion could not be a binding interpretation of the current rule’s requirements.

A copy of the opinion can be found here.