New Matter is Nonprecedential and Unexceptional.

When preparing to argue a case to the CAFC, you may get there early and wander about, and even read from the bulletin board what recent rulings have issued. The nonprecedential ones, with a one-liner per curiam order, create curiousity – what was no meager among the issues presented. Twice, the CAFC has deemed nonprecedential its affirmances in Neutrino Devel. Corp. v. Sonosite, Inc., (CAFC 12/8/2006 and 3/14/2008).

The first appeal was an invalidity ruling, based on impermissible “new matter,” which followed a Markman ruling and a finding of literal infringement. The `021 patent claimed apparatus for “Penile Hemodynamic Stimulation” (see, scary FIGS.). The “new matter” added was that the apparatus is “hand-held” (hopefully by one highly skilled in the art). Plaintiff said “no matter,” and defendant said “new matter,” and the district judge called the whole thing off, and invalidated (thus, freeing the public to do hand-held hemodynamic stimulation without fear of infringement).

Why isn’t invalidation for “new matter” something worthy of CAFC explication, rather than an¬†unworthy,¬†nonprecedential one-pager? Difficulty will afflict any district court judge with a “new matter” challenge who tries to apply the “inherency” standard, or that reflected in dicta in Turbocare Division v.GE, 264 F.3d 1111 (CAFC 2001) (“disclosure is not a model of clarity, neither is it so obscure”). The new matter bar was touched on blandly, as recently as in Baldwin Graphic Sys., Inc. v. Siebert, Inc. (CAFC 1/15/2008).

After the first nonprecedential affirmance, the parties on remand fought the “exceptional case” battle, with the district court rejecting the averments of inequitable conduct and of bad faith coercion to settle. That ruling goes up, and it too is affirmed in a CAFC nonprecedential order. The general rule on “exceptional” case assessments, as applied last fall in Digeo, Inc. v. Audible, Inc., might benefit from a CAFC opinion about the intersection between “new matter” invalidity and an “exceptional” case.