United States Court of Appeals for the Federal Circuit
03-1464, 04-1099
CLONTECH LABORATORIES, INC.,
Plaintiff-Appellee,
v.
INVITROGEN CORPORATION
(formerly Life Technologies, Inc.),
Defendant-Appellant.
Marc R. Labgold, Patton Boggs LLP, of McLean, Virginia, argued for plaintiff-
appellee. With him on the brief were Michael J. Schaengold, Richard J. Oparil, and
Kevin M. Bell. Of counsel was Scott A.M. Chambers.
Jay I. Alexander, Milbank, Tweed, Hadley & McCloy LLP, of Washington, DC,
argued for defendant-appellant. With him on the brief were Robert J. Koch, of
Washington, DC, and James Pooley, of Palo Alto, California. Of counsel on the brief
were Kevin R. Casey and Harrie R. Samaras, RatnerPrestia P.C., of Valley Forge,
Pennsylvania; and, Alan W. Hammond, Invitrogen Corporation, of Carlsbad, California.
Appealed from: United States District Court for the District of Delaware
Chief Judge Sue L. Robinson
United States Court of Appeals for the Federal Circuit
03-1464, 04-1099
CLONTECH LABORATORIES, INC.,
Plaintiff-Appellee,
v.
INVITROGEN CORPORATION
(formerly Life Technologies, Inc.),
Defendant-Appellant.
___________________________
DECIDED: May 5, 2005
___________________________
Before CLEVENGER, DYK, and PROST, Circuit Judges.
CLEVENGER, Circuit Judge.
Invitrogen Corporation appeals the judgment of the United States District Court
for the District of Delaware holding that Invitrogen falsely marked certain of its molecular
biology products. Clontech Labs., Inc. v. Invitrogen Corp., 263 F. Supp. 2d 780 (D. Del.
2003). Because the evidence does not support the court's finding that the relevant tests
put Invitrogen on clear notice that certain products were not covered by the patents
used to mark those products, we affirm-in-part, reverse-in-part, vacate-in-part, and
remand for further proceedings consistent with this opinion.
I
This appeal arises from a 1998 lawsuit filed by Clontech Laboratories,
Incorporated ("Clontech") against Invitrogen Corporation ("Invitrogen") (formerly Life
Technologies, Incorporated) alleging, inter alia, false marking under 35 U.S.C. § 292.
The patents involved in the suit all claim priority to U.S. Patent Application No. 143,396,
which was filed on January 13, 1988. The ’396 application was continued as U.S.
Patent Application 671,156, filed March 18, 1991, which issued as U.S. Patent
No. 5,244,797 ("the ’797 patent"). The ’156 application was divided, giving rise to U.S.
Patent Application No. 825,260, filed January 24, 1992, which issued as U.S. Patent
No. 5,405,776 ("the ’776 patent"). The ’260 application was continued as U.S. Patent
Application No. 404,907, filed March 15, 1995, and was again continued as U.S. Patent
Application No. 614,260, filed March 12, 1996, which issued as U.S. Patent No.
5,668,005 ("the ’005 patent"). The 614,260 application was continued as U.S. Patent
Application No. 798,458, filed February 10, 1997, which issued as U.S. Patent
No. 6,063,608 ("the ’608 patent").
All four patents share the same title: "Cloned Genes Encoding Reverse
Transcriptase Lacking RNase H Activity." The claims in all four patents are generally
directed to RNase H deficient Reverse Transcriptase ("RT") polypeptides, see, e.g., the
’797 patent (claim 1), the ’608 patent (claim 1); polynucleotides encoding RT
polypeptides, see, e.g., the ’776 patent (claim 1), the ’005 patent (claim 1), the ’608
patent (claim 185); methods of using RTs to prepare DNA molecules, see, e.g., the ’005
patent (claim 8), the ’608 patent (claim 189); and kits for preparing DNA molecules
using RTs, see, e.g., the ’005 patent (claim 25), the ’608 patent (claim 195).
03-1464, 04-1099 2
Invitrogen markets RNase H deficient RTs known as SUPERSCRIPT ("SS") and
SUPERSCRIPT II ("SSII"). 263 F. Supp. 2d at 786. SS and SSII are virally derived
RTs either missing sequences important for RNase H activity, e.g., SS, or containing
point mutations in regions of the RT coding sequence important for RNase H activity,
e.g., SSII. Id. Invitrogen also produces and sells kits containing SSII as well as a wide
variety of cDNA libraries purportedly made using SSII. Id. SS and SSII have been
marked with all four patents. Id. at 788. In addition, the kits containing SSII and the
many cDNA libraries have been marked with some of the patents at issue. See (J.A. at
2742-61).
II
Below, the parties disputed whether Invitrogen's SS, SSII, kits, and cDNA library
products were falsely marked. In particular, the parties contested whether the patents
at issue covered Invitrogen's many cDNA library products and whether the kits and
SUPERSCRIPT products failed to meet the "substantially no RNase H activity" limitation
of this family of patents, see, e.g., the ’797 patent (claim 1), the ’776 patent (claims 1
and 5), the ’005 patent (claims 1, 8, 21, 30, and 34), and the alternative language of the
most recent family member, the ’608 patent, see, e.g., claim 1 ("substantially reduced
RNase H activity"), claim 3 ("no detectable RNase H activity"), claim 24 ("does not
significantly degrade an mRNA template"), claim 31 ("no detectable RNase H activity").
The trial court held that Invitrogen's SS, SSII, kits, and cDNA library products had
been falsely marked with the patents in suit. 263 F. Supp. 2d at 793. The trial court
determined that "[n]one of Invitrogen's patents in suit are directed to cDNA libraries," id.
at 790, and that the claim limitation "substantially no RNase H activity," as used in this
03-1464, 04-1099 3
family of patents, was defined in the written description. Id. at 785. Specifically, the
court concluded that the written description defines "substantially no RNase H activity"
in terms of an assay that measures how active a nearly pure population of RT
polypeptides is at cutting RNA:
By the terms 'substantially no RNase H activity' is intended reverse
transcriptase purified to near homogeneity and having an RNase H activity
of less than 0.001 pmoles [3H](A)n solubilized per µg protein with a
[3H](A)n.(dT)n substrate in which the [3H](A)n [sic] has a specific
radioactivity of 2,200 cpm/pmole. RNase H activities of this specific
activity or less allows the preparation of cDNA without significant
degradation of the mRNA template during first-strand synthesis.
The ’797 patent, col. 9, ll. 14-22; see also the ’776 patent, col. 9, ll. 14-22; the ’005
patent, col. 9, ll. 19-27; the ’608 patent, col. 9, ll. 21-29.1 The court did not distinguish
between the "substantially no RNase H activity" used in the claims of the ’797, ’776, and
’005 patents and the alternative language used in the claims of the ’608 patent.
Interpreting 35 U.S.C. § 292, the trial court placed the burden on Clontech to
prove four elements: "(1) a marking importing that an object is patented (2) falsely
affixed to (3) an unpatented article (4) with intent to deceive the public." 263 F. Supp.
2d at 791. Then the court considered these elements in light of evidence pertaining to
Invitrogen's products and patents as well as several RNase H activity experiments
performed over the life of this patent family by the inventors and other Invitrogen
scientists and experts. Id. at 787-88, 792-93. The evidence included experimental
results from solubilization and gel assays performed in 1990, 1991, 1996, and 2000. Id.
at 787-88. In contrast to the earlier experiments, the 2000 experiments were performed
1
According to the parties, the correctness of this definition has been
stipulated to for the ’797 patent, the ’776 patent, and the ’005 patent.
03-1464, 04-1099 4
using the solubilization assay defined in the written description for the "express
purpose" of determining whether Invitrogen's SS and SSII meet the limitation of
"substantially no RNase H activity." Deciding that the 2000 experiments were
dispositive, the court found that "[a]t the very least, these tests put [Invitrogen] on notice
that its products were not covered by the patents in suit and any good faith belief that
[Invitrogen] had that its products were covered by the patents was lost." Id. at 793. The
court reasoned that after this notice, "[Invitrogen's] failure to correct its mistaken
mismarking of its products rose to the level of deceptive intent." Id. Accordingly, the
court held Invitrogen liable for falsely marking its products in violation of 35 U.S.C.
§ 292.
Invitrogen appeals, arguing that the trial court miscomprehended the legal
standard applicable to the element of intent to deceive, committed clear factual error in
interpreting the results of the 2000 experiments, and erred by interpreting 35 U.S.C.
§ 292 as prohibiting marking where the patent does not cover the product at issue.
Clontech responds, arguing that the trial court applied the correct legal standards and
did not err in its interpretation of the 2000 test results. We have jurisdiction to hear this
case pursuant to 28 U.S.C. § 1338(a) (2000) and 28 U.S.C. § 1295(a)(1) (2000).
III
We begin with the statute in suit, which provides that:
Whoever marks upon, or affixes to, or uses in advertising in connection
with any unpatented article, the word 'patent' or any word or number
importing that the same is patented for the purpose of deceiving the public
. . . [s]hall be fined not more than $500 for every such offense.
35 U.S.C. § 292(a) (2000).
03-1464, 04-1099 5
The case law of this circuit on the statute in suit is sparse. In fact, only one
precedent has substantively addressed the statute, and in that case, we affirmed,
without discussion of the text of the statute, the trial court’s holding that no violation of
the statute had occurred because the plaintiff failed "to produce any evidence of intent
to deceive the public." Arcadia Mach. & Tool, Inc. v. Sturm, Ruger & Co., 786 F.2d
1124, 1125 (Fed. Cir. 1986). Consequently, this case presents us with virtually an issue
of first impression.
The statute supplies a civil fine for false marking of articles. Id. at 1125.
According to the statute, when an unpatented article is marked with the word "patent" or
any word or number that imports that the article is patented, and such marking is for the
purpose of deceiving the public, the fine is invoked. When the statute refers to an
"unpatented article" the statute means that the article in question is not covered by at
least one claim of each patent with which the article is marked. Thus, in order to
determine if an article is "unpatented" for purposes of section 292, it must be first
determined whether the claims of a patent cover the article in question. To make that
determination, the claim in question must be interpreted to ascertain its correct scope,
and then it must be ascertained if the claim reads on the article in question.
Assuming an article is mismarked as "patented" because the claims of the cited
patent do not read on the article, the question arises whether more is required by way of
proof to establish that the mismarking is for the purpose of deceiving the public. That is,
should the statute be read to cause all actual mismarking to be subject to the civil fine?
This question has been addressed and answered in other circuits. For example,
the Court of Appeals for the First Circuit long ago interpreted a predecessor statute in
03-1464, 04-1099 6
London v. Everett H. Barr Corporation, 179 F. 506 (1st Cir. 1910). The earlier statute
outlawed marking an unpatented article with the word "patent" for the purpose of
deceiving the public. The First Circuit recognized, even then, that interpreting claims is
not an exact science, and that consequently where one "has an honest, though
mistaken, belief that upon a proper construction of the patent it covers the article which
he marks," the requisite intent to deceive the public would not be shown. Id. at 510.
Years later, the Court of Appeals for the Fifth Circuit adopted the formulation that an
honest, though mistaken, mismarking of an article would not trigger liability under the
statute. See Brose v. Sears, Roebuck and Co., 455 F.2d 763, 768-69 (5th Cir. 1972).
We see no reason to interpret the statute differently to render it a statute of strict
liability for mismarking. Intent to deceive is a state of mind arising when a party acts
with sufficient knowledge that what it is saying is not so and consequently that the
recipient of its saying will be misled into thinking that the statement is true. Seven
Cases of Eckman's Alterative v. United States, 239 U.S. 510, 517-18 (1916). Intent to
deceive, while subjective in nature, is established in law by objective criteria. Id. Thus,
"objective standards" control and "the fact of misrepresentation coupled with proof that
the party making it had knowledge of its falsity is enough to warrant drawing the
inference that there was a fraudulent intent". See Norton v. Curtiss, 433 F.2d 779, 795-
96 (CCPA 1970). Thus, under such circumstances, the mere assertion by a party that it
did not intend to deceive will not suffice to escape statutory liability. Such an assertion,
standing alone, is worthless as proof of no intent to deceive where there is knowledge of
falsehood. But in order to establish knowledge of falsity the plaintiff must show by a
preponderance of the evidence that the party accused of false marking did not have a
03-1464, 04-1099 7
reasonable belief that the articles were properly marked (i.e., covered by a patent).
Absent such proof of lack of reasonable belief, no liability under the statute ensues.
In this case, the trial court examined the facts pertaining to the tests conducted in
2000, and concluded that those tests put Invitrogen on notice that its products were not
covered by the patents and that its markings were, therefore, statutorily deceptive. The
trial court also determined that Invitrogen had no basis for asserting through its labeling
that its kits and cDNA library products were "patented" and that Invitrogen's products
were falsely marked for the purpose of deceiving the public.
The question of whether conduct rises to the level of statutory deception is a
question of fact, see, e.g., Kangaroos U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1573
(Fed. Cir. 1985), and when that question is resolved as here in a bench trial, we review
the decision of the trial court for clear error. B.F. Goodrich Co. v. Aircraft Braking Sys.
Corp., 72 F.3d 1577 (Fed. Cir. 1996).
IV
On appeal, Clontech does not challenge the trial court's finding of no intent to
deceive as to the period before the year 2000. But Clontech urges that the trial court
correctly found that the 2000 tests showed that Invitrogen had knowledge that the
labeled products were not covered by the patents. Invitrogen makes two arguments in
response.2
2
Invitrogen has a third argument, which it contends is a blanket defense to
all charges of false marking. The argument is based on the district court's findings that
employees "unfamiliar with the patent laws" honestly believed the products to be
correctly marked. See 263 F. Supp. 2d at 788-89, 792-93. This of course is
preposterous. As we note, supra, the inference of intent to deceive cannot be defeated
with blind assertions of good faith where the patentee has knowledge of mismarking.
03-1464, 04-1099 8
First, Invitrogen asserts that the results of the experiments performed in 2000 do
not clearly show that the RNase H activity of SS and SSII fail to meet the limitation of
"substantially no RNase H activity." In other words, argues Invitrogen, the trial court
misinterpreted the results of the 2000 experiments. Second, according to Invitrogen,
even if it knew that SS and SSII could not meet the "substantially no RNase H activity"
limitation, it cannot be liable for false marking with the ’608 patent because the claims of
the ’608 patent define the limiting levels of RNase H activity using different language.
The clear error standard permits reversal where after review we are "left with the
definite and firm conviction that a mistake has been committed." United States v.
United States Gypsum Co., 333 U.S. 364, 395 (1948); Ruiz v. A.B. Chance Co., 357
F.3d 1270, 1275 (Fed. Cir. 2004). We address each argument in turn.
A
After evaluating the trial court's opinion, the testimony and evidence, and the
parties' arguments, we are convinced that the trial court clearly erred when it concluded
that the results of the 2000 experiments put Invitrogen on clear notice that its RTs, i.e.,
SS and SSII, have RNase H activity greater than "substantially no RNase H activity" as
that term is defined by the trial court's claim interpretation.
As noted above, the trial court found, and the parties do not dispute, that the
2000 experiments were performed to determine whether SS and SSII meet the assay-
defined "substantially no RNase H activity" limitation of the claims of the patents in suit.
263 F. Supp. 2d at 787-88. The 2000 experiments were performed by Dr. Gerard, an
Invitrogen scientist who is an inventor listed on the patents in suit, and Dr. Champoux,
03-1464, 04-1099 9
an Invitrogen expert for the litigation. The RTs tested were SS, SS(R8),3 and SSII. The
disputed evidence consists of Dr. Gerard's notebook pages (J.A. at 3202-22), which
contain raw data as well as Dr. Gerard's notes pertaining to that data, and
Dr. Champoux's summary of his analysis of the data (Id. at 3223). Both scientists
testified.
Dr. Gerard's handwritten notes reveal an analysis of the raw data. In particular,
the notes reflect that of fourteen SS, SS(R8), or SSII experiments, five showed RT
RNase H activity higher than the claimed 0.001 picomoles [3H](A)n solubilized per µg
protein. At trial, however, Clontech elicited testimony on two data points, one for SS,
which showed RNase H levels of approximately 44 times the claimed amount, and one
for SSII, which showed activity of approximately 16 times the claimed amount. (Id. at
5268-69).
Invitrogen does not appear to have addressed this on redirect. Instead,
Invitrogen relied on Dr. Champoux, the expert it retained for the testing to interpret the
data generated from the 2000 experiments. Dr. Champoux testified that the 2000
experiments showed that the tested RTs had "no detectable RNase H activity." (Id. at
5675). Dr. Champoux also testified about how the tests were designed and his
involvement in designing the tests. (Id. at 5678-82). He also explained that his
calculations took into account variability resulting from the series of measurements that
go into a sample. (Id. at 5684-91). He explained that when properly interpreted the
2000 tests showed that in 13 of the 14 experiments performed RNase H activity was no
3
Invitrogen characterizes SS(R8) as a "second sample" of SUPERSCRIPT.
Clontech does not argue that there is any important difference between SS and SS(R8)
or that it is otherwise inappropriate to consider SS(R8) as equivalent to SS.
03-1464, 04-1099 10
different in the presence of SS, SS(R8), or SSII, than in the absence of RTs. (Id. at
5692-63). Finally, Dr. Champoux explained that the interpretation of the data seen in
Dr. Gerard's notes was not reliable because it did not take into account experimental
variation. (Id. at 5696-98). After reiterating his conclusion that the data showed no
difference between samples with RNase H deficient RTs and background, (Id. at 5698),
he finally explained that the one test of the 14 that was aberrant was likely due to a
contaminating "bacterial RNase H in that preparation." (Id. at 5701).
This testimony went largely unanswered. Clontech's expert provided a
hypothesis that some data points, including those showing RNase activity, were reliable
because they occurred in the first day of testing but that data points from later days
were unreliable because freezing and thawing caused the enzyme activity to degrade
with time. However, this criticism was answered by Dr. Champoux who explained that
the experiments used the standard technique of storing the RT enzymes in glycerol to
protect against freezing-related damage. (Id. at 5676).
As noted above, the standard is whether Clontech proved by a preponderance of
the evidence that Invitrogen did not have an honest good faith belief in marking its
products. The trial court held that prior to the 2000 experiments, there was insufficient
evidence to find that Invitrogen did not have a good faith belief that SS and SSII met the
"substantially no RNase H activity" limitation.4 Thus, the issue is whether the results of
the 2000 experiments should have disabused Invitrogen of any good faith belief it
harbored concerning the RNase H activity of SS and SSII. Viewing the testimony and
evidence as a whole, we are firmly convinced the court erred in deciding that the results
4
This holding is not appealed by Clontech.
03-1464, 04-1099 11
of the 2000 experiments put Invitrogen "on notice that its products were not covered by
the patents in suit." 263 F. Supp. 2d at 793. The testimony Clontech elicited from Dr.
Gerard did not address the complete results of the experiments, and there is no
indication that Clontech was able to impeach or otherwise discredit Dr. Champoux's
reasoned explanation of the full scope of the tests and the results.
We reverse the trial court's determination that the data generated by the 2000
experiments constituted notice to Invitrogen that the marking of SS and SSII was
statutorily deceptive based exclusively on the limitation "substantially no RNase H
activity." In short, the evidence adduced by Clontech to show false marking fails to
meet the required test of preponderance.
B
The ’608 patent contains a number of claims that define the amount of RNase H
activity of the claimed RTs using language similar to, but different from, "substantially no
RNase H activity." See, e.g., the ’608 patent, claim 1 ("substantially reduced RNase H
activity"), claim 3 ("no detectable RNase H activity"), claim 24 ("does not significantly
degrade an mRNA template"), claim 31 ("no detectable RNase H activity"). According
to Invitrogen, these claims are different in scope from those containing the language
"substantially no RNase H activity" and therefore the trial court's false marking decision
cannot apply to these claims.
Because the trial court's opinion does not indicate its interpretation of this claim
language, we do not know whether it construed the language to have the same
definition as "substantially no RNase H activity" or whether it construed this claim
language as having some different meaning. If the trial court construed the language
03-1464, 04-1099 12
defining RNase H activity as the same in each instance, the holding cannot stand for the
reasons discussed above, i.e., Clontech did not prove that the results of the 2000
experiments put Invitrogen on notice that SS and SSII do not meet the "substantially no
RNase H activity" limitation. If, on the other hand, the court gave the language some
other construction, absent a statement of what the construction is and how that
construction applies to the evidence, we are in no position to review that decision. For
that reason, we vacate the trial court's finding that SS and SSII were falsely marked with
the ’608 patent.
V
In its next challenge, Invitrogen insists that the trial court's "finding that
Invitrogen's cDNA libraries were falsely marked was legally erroneous." Factually,
Invitrogen does not contend that its cDNA library products5 fall within the boundaries of
the properly construed claims of any of the four patents at issue. We thus accept the
trial court's holding on that issue. Moreover, Invitrogen does not contend that it had a
good faith belief that its cDNA library products fall within the boundaries of the properly
construed claims or that its products were marked by mistake. Instead, Invitrogen relies
5
The Joint Appendix contains a list of products that the parties stipulate are
marked with particular patents. This list appears to contain approximately 69 cDNA
library products, many marked with the ’005 patent and/or the ’608 patent. Both of
these patents contain claims generally directed to making cDNA molecules from an
mRNA template using RTs. See the ’005 patent (claim 8); the ’608 patent (claim 189).
Although information sheets for all of Invitrogen's library products are not in the record,
some that are contain the language: "This product is the subject of U.S. Patent No.
5,668,005, owned by [Invitrogen]. Purchase of this product conveys to the buyer only
the non-transferable right under to use the product in research conducted by the buyer.
The buyer cannot sell or otherwise transfer this product to any third party." (J.A. at
1237); see also (J.A. at 1249, 1263-65) ("This product is the subject of U.S. Patent
No. 5,668,005.").
03-1464, 04-1099 13
on the argument that as a matter of law marking under section 292 does not require a
good faith belief that the marked article falls within the subject matter defined by at least
one claim of each patent with which the article is marked. In support of this argument,
Invitrogen postulates that there is no harm in marking products with patents even when
those products do not fall within the bounds of properly construed claims because the
additional marking further serves the policies of the marking statute by "allow[ing] the
relevant members of the public to undertake the appropriate investigation and enables
those concerned to take steps to avoid infringement." According to Invitrogen, "no
reason exists in law or policy to hold illegal a practice that effectively brings more
information to the public than might be legally required." The answer to Invitrogen's
arguments is found in the words of the statute, which holds liable "[w]hoever"
deceptively marks "any unpatented article."
Moreover, we disagree with the proposition Invitrogen relies upon to support its
argument, finding it unpersuasive and counter to the Supreme Court precedent of Wine
Ry. Appliance Co. v. Enterprise Ry. Equipment Co., 297 U.S. 387, 397 (1936), Bonito
Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 162 (1989), and Lear, Inc. v.
Adkins, 395 U.S. 653 (1969). Together, Wine Ry. and Bonito Boats explain that
Congress intended the public to rely on marking as "a ready means of discerning the
status of intellectual property embodied in an article of manufacture or design." Bonito
Boats, 498 U.S. at 162. Lear articulates federal patent policy, recognizing an "important
public interest in permitting full and free competition in the use of ideas which are in
reality a part of the public domain." 395 U.S. at 670. That interest is clearly injured by
false marking because the act of false marking misleads the public into believing that a
03-1464, 04-1099 14
patentee controls the article in question (as well as like articles), externalizes the risk of
error in the determination, placing it on the public rather than the manufacturer or seller
of the article, and increases the cost to the public of ascertaining whether a patentee in
fact controls the intellectual property embodied in an article.6
Finally, Invitrogen's brief to this court hints that we should find error in the trial
court's determination that the cDNA library products were falsely marked because
Invitrogen used SSII to make the cDNA library products in question, and because the
’005 and ’608 patents contain claims generally directed to using RNase H deficient RTs
to make cDNA molecules. Invitrogen also hints that we should find error in the trial
court's decision because the patents support an infringement claim against anyone who
makes cDNA libraries using RNase H deficient RTs or uses Invitrogen's cDNA libraries
without its permission.
These suggestive statements do not constitute persuasive argument, particularly
where, as here, there is little indication that they were raised in a manner that required
the trial court to decide them. This is not a case where the cDNA library products were
marked with language stating that the products were made by the "methods" of any
patents. Rather, the record shows that the marking language included the statement:
6
In each instance where it is represented that an article is patented, a
member of the public desiring to participate in the market for the marked article must
incur the cost of determining whether the involved patents are valid and enforceable.
Failure to take on the costs of a reasonably competent search for information necessary
to interpret each patent, investigation into prior art and other information bearing on the
quality of the patents, and analysis thereof can result in a finding of willful infringement,
which may treble the damages an infringer would otherwise have to pay. See generally
Knorr-Bremse Systeme Fuer Nutzfahrzeuge, GMBH v. Dana Corp., 383 F.3d 1337,
1342 (Fed. Cir. 2004) (en banc) (citing 35 U.S.C. § 284 for the law that "the court may
increase damages up to three times the amount found or assessed.").
03-1464, 04-1099 15
"This product is the subject of U.S. Patent No. 5,668,005." See, e.g., (J.A. 1263-65).
Moreover, Invitrogen does not appear to have challenged the trial court's claim
construction that its claims did not cover the libraries. At trial, Clontech received a claim
construction that: "[n]one of Invitrogen's patents in suit are directed to cDNA libraries."
263 F. Supp. 2d at 790. Invitrogen does not point this court to where it urged a different
claim interpretation on the trial court that was erroneously rejected. Applying that claim
construction, the trial court held that "Invitrogen's cDNA libraries are not covered by the
patents in suit." Id. at 790. Beyond blind assertions of good faith, Invitrogen does not
direct this court to trial evidence that it had an objective good faith belief that its cDNA
library products are patented as that term is used in section 292. Instead, Invitrogen
now asks us to construe the claims to include SSII, to find that SSII meets some or all of
the limitations of the ’005 and ’608 patents pertaining to RNase H activity, to construe
the limitations of the ’005 and ’608 patents pertaining to cDNA synthesis, to find that
SSII meets the limitations of the ’005 and ’608 patents pertaining to cDNA synthesis, to
find that Invitrogen's cDNA libraries were made with the methods claimed by the ’005
and ’608 patents, and to find that Invitrogen could assert a patent infringement claim if
others were to either make cDNA library products using RNase H deficient RTs or use
Invitrogen's existing cDNA library products without its permission.
We will not decide these many issues for the first time on appeal. For the
purposes of this appeal, Invitrogen has effectively waived these arguments by failing to
raise them in a form that required a decision by the trial court. See Fuji Photo Film
Co. v. Jazz Photo Corp., 394 F.3d 1368, 1377 (Fed. Cir. 2005).
03-1464, 04-1099 16
VI
Finally, we address the trial court's decision that Invitrogen's kits are falsely
marked in violation of section 292(a). Other than its findings concerning whether SS
and SSII meet the "substantially no RNase H activity" limitation, the trial court's opinion
is largely devoid of any useful findings pertaining to whether Invitrogen's kits that are
marked with the patents at issue are covered by the patents, and if not, whether a good
faith basis exists for the marking of these products. A review of the record suggests
that at least some of the kits at issue comprise collections of components, one of which
is SSII. See, e.g., 3' and 5' RACE kits (J.A. at 1246-47) and SuperScript Choice
System (J.A. at 1250). Whether having SSII as a component of these kits makes them
products that are "the subject of" the listed patents, e.g., (J.A. at 1246), or whether there
are other claims in these patents that could confer an element of truth to that statement
are unanswered questions. Moreover, assuming that these questions are answered in
the negative, review would be facilitated by findings on Invitrogen's intent as it relates to
these products. Unfortunately, these issues receive no attention in the opinion of the
trial court making futile our attempt to fully review the judgment that kits were falsely
marked. Therefore, to the extent the trial court based its judgment of false marking of
the kits on its findings that SS and SSII failed to meet the "substantially no RNase H
activity" limitation, the judgment is reversed. If, however, the trial court had other
reasons for believing that these products were mismarked and Invitrogen knew of that
mismarking, the trial court may treat this decision as a remand to more fully explain its
reasoning.
03-1464, 04-1099 17
VII
For clarity, we begin our summary with a statement of what we are not reviewing.
We are not reviewing and offer no opinion on whether Invitrogen's SS and SSII RTs
meet the limitations of any of the claims in any of the patents, or whether if those RTs
are covered by claims, those claims would be not invalid. Neither are we considering
any other question of patent scope, validity, or enforceability of any of the patents at
issue.
What we are reviewing is the trial court's judgment that Invitrogen falsely marked
SS and SSII RTs because it knew that those products did not meet the "substantially no
RNase H activity" limitation of the ’797, ’776, and ’005 patents or similar limitations of
the '608 patent; falsely marked cDNA library products with the patents in suit (most
frequently the ’005 patent and the ’608 patent); and falsely marked its kit products with
the patents in suit.
Keeping the above in mind, because we discern clear error in the trial court's
finding that the 2000 tests put Invitrogen on notice that SS and SSII do not meet the
"substantially no RNase H limitation," we reverse the finding that SS and SSII were
falsely marked based on claims containing that limitation. Furthermore, because the
trial court gave no indication that the claims of the ’608 patent contained the limitation
"substantially no RNase H activity" or that Invitrogen had knowledge that SS and SSII
failed to meet similar (but not identical) limitations present in the claims of the ’608
patent, we vacate and remand the decision of the trial court finding false marking of SS
and SSII with the ’608 patent for further proceedings consistent with this opinion.
03-1464, 04-1099 18
Because Invitrogen's policy arguments are unconvincing and foreclosed by
statute, we affirm the trial court's decision that Invitrogen falsely marked its cDNA library
products.
Regarding Invitrogen's kit products, if the decision that Invitrogen engaged in
false marking is founded in the clearly erroneous finding that the 2000 tests put
Invitrogen on notice that SS and SSII do not meet the "substantially no RNase H
limitation," it is reversed. If the trial court had other reasons for reaching its decision, it
may treat this decision as a remand to more fully explain its reasoning.
For the reasons discussed above, we affirm-in-part, reverse-in-part, vacate-in-
part and remand for further proceedings consistent with this opinion.
COSTS
No costs.
AFFIRM-IN-PART, REVERSE-IN-PART, VACATE-IN-PART AND REMAND
03-1464, 04-1099 19