Using Foreign Infringement Judgment to Prove Infringement in the US

Quad/Tech v. Q.I. Press Controls (Fed. Cir. 2011)

Quad/Tech sued QI, alleging infringement of its U.S. Patent No. 5,412,577. The ’577 patent is directed to a “color registration system for a printing press.” According to the briefing, QI has already lost a parallel patent infringement lawsuit in Germany and is subject to a permanent injunction based upon a “virtually identical” patent claim. In the German case, QI lost at lower court level and then failed to appeal.

Preliminary Relief: The district court denied Quad/Tech’s motion for a preliminary injunction. Although interlocutory, the grant or denial of preliminary injunctive relief is immediately appealable. However, a district court’s decision to grant or deny a preliminary injunction is reviewed only for an abuse of discretion that requires a “showing that the court made a clear error of judgment in weighing relevant factors or exercised its discretion based upon an error of law or clearly erroneous factual findings.” Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1364 (Fed. Cir. 1997).

On appeal, the Federal Circuit issued a two paragraph non-precedential opinion upholding the district court conclusion that, based upon a preliminary claim construction, that the infringement claim may fail and that Quad/Tech had failed to prove likely irreparable harm absent preliminary injunctive relief.

Using Foreign Infringement Judgment to Prove Infringement in the US: An interesting aspect of this decision is the district court’s use of the German opinion. In particular, Quad/Tech requested that the court “adopt Q.I.’s acceptance of the judgment in Germany as an admission of infringement of a virtually identical claim.” The district court rejected that argument – holding that:

  1. Quad/Tech had failed to provide sufficient evidence of the German judgment (the company had only submitted an affidavit from a corporate VP); and
  2. Foreign patent determinations are not binding upon US litigation concerning US patents.

In its analysis, the district court cited several prior cases where US courts have refused to rely upon foreign analysis of family-member patents. In Medtronic, Inc. v. Daig Corp., 789 F.2d 903 (Fed.Cir.1986), the accused infringer asked the court to rely upon a German tribunal holding that the parallel family-member patent was invalid as obvious. The Federal Circuit rejected that argument – calling it “specious.” The Medtronic decision was followed in both Allen v. Howmedica Leibinger, Inc., 197 F.Supp.2d 101 (D.Del.2002) and Oki Am. v. Advanced Micro Devices, Inc., 2006 WL 3290577 (N.D.Cal. Nov. 13, 2006). In the Oki Am case, the court specifically held that the “the action taken by the European Patent Office rejecting counterpart application over the same reference is neither controlling nor persuasive.” In his patent digest, Robert Matthews concludes that:

Generally, a validity determination by a foreign patent office has little relevance or weight in considering the validity of a corresponding United States patent. The Federal Circuit has instructed that because the theories and laws of patentability vary from country to country, as do examination practices, caution must be exercised in extrapolating any consequences arising out of acts taken in a foreign proceeding.

Matthews, Annotated Patent Digest, § 15:53 (2011).

There are several important distinctions between Quad/Tech’s case and Medtronic. Perhaps most notably is the fact that Quad/Tech is requesting consideration of the foreign judgment only at this preliminary stage when the court is attempting to speculate on the likelihood of success on the merits.

33 thoughts on “Using Foreign Infringement Judgment to Prove Infringement in the US

  1. Also remember that a patent infringement litigation can be a David-versus-Goliath confrontation. Defendants in patent infringement lawsuits are usually large corporations with unlimited resources, while plaintiffs in patent infringement lawsuits are often individuals or small businesses with very limited resources.

  2. Foreign judgments apparently CAN be used to prove false marking

    Danny boy – correct to a point.

    Just like I observed above to Red Monkey, any pertinent information known to the applicant must be shared, or affects one’s duty to share, with the USPTO. This is a US law – foreign jurisprudence itself still aint got nothin ta do with followin US law.

    Funny too how this is yet another “fluffy” point that Sunshine wanted ta challenge me on and then disappears.

    Even more funny how those that appear ta support Malcolm and challenge me are ever so quiet on the Sunshine windmill crusades that end with the blade crushing his skull.

  3. I think the U.S case law has pretty much settled that there is no collateral estoppel or res judicata based on foriegn court patent judgment because foreign patent laws are different from the U.S’s.
    For one, the scope of claims under foreign patent law can be different that under the US patent law.

    The question, however, is should the U.S. court apply factual findings by the foreign court, like patentee’s statements made in foreign prosecution? I remember reading some lower court said along the line it would not save court’s time anyways.

  4. Lionel, true. But, the facts here assume the same invention is being claimed.

    The way I understand things is that the broadest possible claim scope is what is disclosed and enabled and equivalent thereof. The Germans can claim the details, and still get that scope. The US has to claim broadly to get to the periphery. We even try to claim equivalents.

    But, if the same invention is being claimed, one should assume that both systems will find the same device an infringement.

  5. yeah – you mean like your four page blah-blah-blah of a couple days ago? Like how you keep on messin things up?

    So sorry that such “piss off or bore you to death”.

    NOT.

    As for your opinion on anything, ya forgot ta ask me if I care.

  6. Ping, you have again deteriorated to the point where your posts are no longer worth the effort to read or consider.

    Consider this–you make MALCOLM seem like a breath of fresh air.

    You’ve pissed off, or bored to death, Malcolm, Walterscheid, myself, Dhuey, and Ned, in only the past few days.

    You’re bringing things down.

    Pull up your bootstraps, and show us a good, or at least a genuine, post, written in a readily-understandable language.

  7. I wonder how many CS patents that Kaye Scholer LLP attorneys have written in the last 10 years that could fall prey to the same arguments that their attorneys employed in CLS Bank?

  8. Ned,

    The boundary of a German claim is less clear. It’s a very “heart of the invention” jurisdiction. The bounds of the German claim per a German court may not match the boundary as defined by claim construction in the USA.

  9. This decision is contrary to the New World Order. I expect Obama to intervene soon. (Without congressional authorization.)

  10. Yet another lame post by the bot-like TL.

    his case will have an impact on the scope of the abstract idea exception…

    Um, no.

    This is a DISTRICT court case (and one sure to be relatively short lived. Brush up on your jurisprudence rules there TL.

  11. Does that mean we don’t have to file foreign office actions anymore in an IDS? I’ve never found anything conclusive on whether to do this.

    Um, no.

    Ya still gotta obey your duty to share info ya have – dont matta the source of that info. Think: ethical duty.

    This really is not that complicated.

  12. Wait, this wasn’t Bob but the ND Calif. Does that mean we don’t have to file foreign office actions anymore in an IDS? I’ve never found anything conclusive on whether to do this.

  13. Here is a similar story

    Kaye Scholer LLP announced today that the firm obtained summary judgment for its client CLS Bank in CLS Bank v. Alice Corp., a litigation asserting patent infringement brought under four U.S. patents directed to computer-implemented methods, systems, and products for exchanging a financial obligation, because each of the patent claims was directed to an “abstract idea” and was invalid because it was directed to non-patentable subject matter.

    The case confronts issues concerning patentable subject matter related to Bilski v. Kappos. By extending the reasoning in last year’s Bilski case to invalidate “abstract” business methods on a general purpose computer, this case will have an impact on the scope of the abstract idea exception, which had not been addressed either by the Federal Circuit or by the Supreme Court in their respective Bilski decisions.

    The Kaye Scholer team was led by William A. Tanenbaum and the case was argued by Steven J. Glassman. They were assisted in briefing by Stephen J. Elliott.

  14. Here is a similar story

    Kaye Scholer LLP announced today that the firm obtained summary judgment for its client CLS Bank in CLS Bank v. Alice Corp., a litigation asserting patent infringement brought under four U.S. patents directed to computer-implemented methods, systems, and products for exchanging a financial obligation, because each of the patent claims was directed to an “abstract idea” and was invalid because it was directed to non-patentable subject matter.

    The case confronts issues concerning patentable subject matter related to Bilski v. Kappos. By extending the reasoning in last year’s Bilski case to invalidate “abstract” business methods on a general purpose computer, this case will have an impact on the scope of the abstract idea exception, which had not been addressed either by the Federal Circuit or by the Supreme Court in their respective Bilski decisions.

    The Kaye Scholer team was led by William A. Tanenbaum and the case was argued by Steven J. Glassman. They were assisted in briefing by Stephen J. Elliott.

  15. As usual, since both define the green, a device in the green will infringe both the German and the American claims. What is so difficult to understand about this?

  16. “a validity determination by a foreign patent office has little relevance or weight in considering the validity of a corresponding United States patent”

    I don’t know if I agree with Bob on this one, and will not stop citing foriegn office actions in IDSs…

    “Foreign patent determinations are not binding upon US litigation…”

    Of course not, that’s not the point. If a foriegn court found the identical patent claim invalid in, say, Germany, this data could be used to prove, for example, likelihood of success on the merits.

    The key aspect for failure was not the DE judgement, it was the failure of Quad Tech to prove irreparable harm.

    End of story.

  17. Ned, you misunderstand. The green is the claim scope, not the pin. Central claiming gives you the green based on the pin. Peripheral claiming gives you the green based on the edges of the green.

  18. But hey, that’s just me being all rational and stuff

    Not likely. At least not in the normal sense. Nows if ya be the one in charge of defining things for the Office past (like “quality”), then I sees where ya be comin from.

    And tell me Sunshine – what US law is broken by lying in a German court (per se – just ta lock down the goal posts)?

  19. Not only is validity decided in Germany differently from the USA but also what is the ambit of the claim.

    When Europe was drafting the 1963 Strasbourg Convention it had to navigate between the UK concept of peripheral claiming and the German concept of central claiming. Suppose a golf green is the territory protected by the claim. An English claim defines the periphery of the green. Conversely, a German central claim is like the flag on the stick standing in the hole in the middle of the green, with the Best Mode written on the flag. See Article 69 of the European Patent Convention and the Protocol on the Interpretation of Article 69 EPC to find out how Europe since 1978 has reconciled these two contradictory notions of scope of protection.

    Now, if your claim is valid in Germany, what exactly is it that makes you think it is also valid in the USA? If you infringe it in Germany, what leads you to suppose that you also infringe the same claim in the USA?

  20. ping But even then, PA, ask yourself if you would you want to be bound by any foreign law or legal proceeding?

    Or maybe first ask pingaling what it means to be “bound by”, and what in heck that has to do with the holding in this case.

    Is being “bound by” a foreign law or legal proceeding something every true American should be deeply frightened of? It seems to me every time we file a PCT or enter national phase in a foreign country, we are agreeing to be “bound by” extra-US laws and/or legal proceedings. Don’t tell your parents!

    It also seems to go without saying that if you make statements under oath before a foreign tribunal that you should expect those statements to have, at the very least, significant evidentiary weight as admissions unless you have a legal reason (e.g., duress) for ignoring them.

    But hey, that’s just me being all rational and stuff. I’m sure if you look at the US Constitution from a “moral basis” you’ll find that lying under oath in foreign jurisdictions is perfectly awesome and should never have any consequences for a citizen on his/her home turf.

  21. My “gut” reaction is that the court should have considered the German action, but they needed more evidence. What they needed was the entire prosecution histroy translated, the patent translated, the relevant proceedings in Germany translated, and some kind of detailed comparison of the device found infringing and the accused device.

    Given enough proof and a full and fair opportunity for the defendant’s US counsel to review the record in Germany based upon the translation, I would think the German judgment could be persuasive.

  22. I recall the case but not the specifics. I’m guessing the contradictory arguments were regarding facts (i.e., reference X discloses …). In that case, the different laws wouldn’t matter. Now, if the contradictory arguments were regarding patent law where say the standards of obviousness are different, should you have a duty to disclose? The answer still might be yes, but then you can just distinguish by explaining the law is different than in the other country.

  23. As has been noted in other contexts (e.g. C&C), litigation is a vastly different arena than prosecution.

    But even then, PA, ask yourself if you would you want to be bound by any foreign law or legal proceeding? Then try to remember that patent rights, er, um, (P)atent (R)ights are country specific.

    by the by – Fei baby would be proud of you, as you appear to actually be listening well.

  24. PA, the case that jumps to mind is the CAFC case last year in which there was a finding of inequitable conduct in the US b/c the patentee had made arguments before the EPO about a particular point that were exactly the opposite of the arguments it made about the same point before the USPTO – and had failed to notify the USPTO of the discrepancy. But that’s really a different kettle of fish: there it was the applicant/patentee’s action, not the foreign tribunal’s decision, that was at issue.

  25. Question is – Is claim construction in foreign jurisdictions binding in US litigation? Of if the patentee argued for specific construction? Or, if patentee’s statements in foreign prosecution may be used in US construction?

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