Article by Paul Devinsky and Tyler Woods
The U.S. Court of Appeals for the Federal Circuit of Appeals overruled the grant of summary judgment of non-infringement holding "substantially spherical, concave reflective surface . . . having a cylindrical component added thereto" included a "toroidal" surface, On-Line Technologies, Inc. v. Bodenseewerk Perkin-Elmer GMBH, Case No. 04-1291 (Fed. Cir. Oct. 13, 2004).
The device at issue is a long-path gas cell, which is used in an infrared spectrometer to determine the composition of gases such as emissions from industrial plants. On-Line alleged infringe-ment of its patent on a method for increasing the length of the light path in a gas cell and thereby increasing the accuracy of the measurement and misappropriation by Perkin-Elmer of On-Line’s trade secrets (after signing a nondisclosure agreement).
The Court noted when construing claims, guidance as to the meaning of unclear language can be found in the extrinsic evidence of the record (e.g., the specification) and references to the preferred embodiment(s) described in the patent. Working with these principles, the Court explained the specification made it clear a toroidal surface is substantially spherical and has a "cylindrical component superimposed thereupon." Furthermore, the reference to the preferred embodiment as having mirrors with toroidal surfaces would "give rise to a very strong inference" that the claim should be construed to include such surfaces. Finally the Court noted that even though both parties agreed the mathematical description of the devices in question is different, a person of ordinary skill in the art would understand the patent language as a way of describing either product.
The Court next considered On-Line’s claim Perkin-Elmer misappropriated On-Line’s trade secret by using information it gained while it had access to On-Line’s product pursuant to a nondisclosure agreement. On-Line presented no evidence Perkin-Elmer engaged in any conduct prohibited by the nondisclosure agreement. The only evidence presented was that Perkin-Elmer did not begin to incorporate the features of On-Line’s patent into its own product until after the patent was issued. The Court noted such information did not qualify for protection as a trade secret since it had become public knowledge once the patent was issued.
The Court also considered On-Line’s assertion Perkin-Elmer misappropriated the infrared light source and assembly used in the On-Line spectrometer. The evidence at trial indicated the use of the light source had already been disclosed by a third party, and Perkin-Elmer learned of the light source independent of any contact with On-Line. On-Line relied solely on opinions of an expert to prove that Perkin-Elmer’s light source was identical or substantially similar to On-Line’s. The Court held conclusory assertions by expert witnesses are not sufficient to overcome evidence that the light source was public knowledge or Perkin-Elmer’s independent discovery
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