Means-Plus-Function and Attorney Fees | Patently-O

by Dennis Crouch

Sarif Biomed v. Brainlab (Fed. Cir. 2018) [SarifBiomed]

Sarif’s patent is directed to a “computer-assisted microsurgery installation” couples place sensors with visuals to put the place of a tool within just a fastened reference body. U.S. Patent No. 5,755,725 (1993 priority).

In the dispute, Sarif very first sued Brainlab for infringement.  Brainlab responsively petitioned for inter partes critique (IPR). That petition was rejected right after the PTAB identified that it could not come to a decision anticipation simply because the promises ended up as well indefinite. Even though the PTAB statements denying the petition are not binding in any way, they are naturally influential.  Here, the district courtroom adopted the PTAB and ruled that the promises ended up invalid as indefinite.  In distinct, the courtroom appeared at the pursuing declare expression:

(d) a laptop or computer tailored to: . . . (3) handle place and displacements of the tool . . .

Even though not in traditional signifies-as well as-operate language, the district courtroom held that the declare lacks structure pertaining to the operate of managing place and displacement.

Claim 1’s “computer tailored to” carry out this operate is an inadequate disclosure of structure as there is no disclosure as to how the laptop or computer would carry out the operate. “[I]f a declare recites a generic expression that, adequately construed in light of the specification, lacks adequately definite structure to a human being of ordinary ability in the artwork, the presumption is defeat and the patentee has invoked signifies-as well as-operate saying.” Apple (2014). Also, as just lately stated by the Federal Circuit in Williamson, “the truth that one particular of ability in the artwork could application a laptop or computer to carry out the recited capabilities can not create structure the place none otherwise is disclosed.”

The declare lacked structure.  It turns out that specification also lacked aid for the claimed signifies and thus is indefinite under In re Donaldson Co., 16 F.3d 1189 (Fed.Cir. 1994) (en banc).

The attractiveness listed here does not focus on the merits of the indefiniteness discussion, but somewhat includes the accused infringer’s petition for lawyer service fees that was denied.  On attractiveness listed here, the Federal Circuit has affirmed the decrease court’s denial of service fees — keeping that the district courtroom acted within just its discretion in finding no “exceptional circumstance.”

Regulation of Attorney Service fees: The typical rule in patent litigation is that each individual get together is liable for compensating their own lawyers acquire-or-lose.  The Patent Act authorizes a judge to buy cost shifting, but only in “exceptional scenarios.” In Highmark and Octane Exercise, the Supreme Court docket collectively held that the remarkable circumstance dedication includes a flexible investigation involving the “totality of the circumstances” deemed at the discretion of the district courtroom.  The investigation includes, inter alia, thing to consider of any unreasonable steps, get together motivations, and toughness of arguments.  Since patent litigation is highly-priced, cost awards can quickly arrive at into the millions-of-bucks.

On the merits listed here, the Federal Circuit agreed that Sarif’s declare design place of no-signifies-as well as-operate was “well supported” – despite eventually shedding the circumstance.  With regards to the PTAB’s assertion of invalidity, the Federal Circuit wrote:

Brainlab destinations as well much significance on the PTAB’s dedication. The PTAB does not have authority to institute an inter partes critique beneath § 112. See 35 U.S.C. § 311(b). As a result, as Brainlab admitted, any conclusion pertaining to indefiniteness is dicta.

With no the excess weight of that goal proof of presenting weak arguments, it was quick for the Federal Circuit to affirm the denial of service fees. AFFIRMED.

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