The trial court also rejected objective evidence that the invention met “a fundamental and important need” and was a “tremendous commercial success” because it concluded that “claim 3 of the `275 patent does not describe McMurtry`s investigation.” As explained above in Part II.A of this Opinion, this is an incorrect interpretation of claim 3 and calls into question the Court`s apparent conclusions that no link between this invention and economic success has been established. But even without taking into account this additional evidence, we are of the opinion that Zeiss has not legally proved by clear and convincing evidence that claim 3 of the `275 patent is manifestly invalid and that the contrary legal conclusion of the District Court is erroneous and must be annulled. James A. Oliff, Oliff & Berridge, Alexandria, Virginia, argued for Renishaw PLC. He was accompanied by William P. Berridge and Edward P. Walker. Milton Sherman, Kaye, Scholer, Fierman, Hays & Handler, New York, of the lawyer, also appeared on the letter. 215.
The doctrine of judicial disqualification is based on the assertion that, if a party occupies a particular position in judicial proceedings and manages to maintain them, it cannot adopt the opposite position merely because its interests have changed. Wang Laboratories, Inc. v. Applied Computer Sciences, Inc., 958 F.2d 355, 358 (Fed.Cir.1992). The doctrine is designed to protect the integrity of the judicial process and prevent parties from “playing quickly and with the courts.” Edwards v. Aetna Life Ins. Co., 690 F.2d 595, 598-99 (6th Cir. 1982); Scarano v Central R. Co., 203 F.2d 510, 513 (3d Cir.1953). It sets a limit for litigants who argue which facts seem advantageous at a given time and who argue a contradictory state when self-interest may dictate a change.
1B James Wm. Moore, Moore`s Federal Practice ΒΆ 0.405[8] (2nd edition 1996). In summary, the District Court`s conclusion that claim 3 is invalid for lack of fitness for purpose and lack of a clear claim of the subject-matter that the inventor considers to be his invention is based on a misconception of the claim and a misunderstanding of the applicable provisions of patent law. The first participation is therefore clearly incorrect and the second an error of law. Both must be overthrown and defeated in this protocol. It has long been believed, and we are now asserting, that it is entirely consistent with the requirement of specificity of the claim set out in the second paragraph of Article 112 to submit “sub-combination claims” relating to a single aspect or combination of elements of an invention whose utility is separate and distinct from other aspects of the invention. As one of our predecessors noted, “it is not necessary for a claim to reflect all the elements necessary for the practical use of the claimed subject-matter” because it is “entirely appropriate and consistent with Article 112 to make claims only in [one] aspect”. Bendix Corp.
v. United States, 600 F.2d 1364, 1369, 220 ct. Cl. 507, 514, 204 USPQ 617, 621 (1979). Therefore, the invalidity conclusion based on the conclusion that the claim is ambiguous is legally incorrect.5 Moreover, the District Court erred only the descriptive part of the tender specifications to determine what McMurtry had invented. Claims, including what the inventor considers to be his invention, must be examined and each claim must be examined individually. In an apparatus disclosed as embodiment of an invention, several inventions may be present; Therefore, claims are the right place and each claim should be considered separately. 80. After becoming aware of Marposs` MIDA probes, Renishaw pursued a number of applications for renewal of the `691 patent.
Tr 436-38; DX 1150, pp. 9-12. In general, a renewal application contains exactly the same disclosure, specifications and numbers as the original patent. The only thing that changes is the demands. Tr 721-22. Both McMurtry and Renishaw`s U.S. patent attorney acknowledged that their purpose in pursuing these renewal applications was to attempt to write claims that might be made against the Marposs MIDA probes. Tr 438-39; DX 1150, pp. 18-20.
The District Court`s interpretation of claim 2 of the `998 patent was vitiated by an error of law and the conclusion that no infringement had occurred on the basis of that interpretation had to be dismissed as manifestly erroneous. Since our finding is based on the undisputed facts properly established in the appeal record, no further finding of fact on liability for breach of this claim is required. 174. Dr. DeBra has used and conducted tests on Marposs and Renishaw probes. Tr 1287-88, 1326-27. However, he never met or worked with Marposs until he was contacted by Marposs` lawyer in this litigation and only agreed to participate after concluding that there were significant differences between the Marposs device and the Renishaw patent probes.