CAFC: Prosecution Disclaimer Does Not Preclude Infringement Suit Against Product Exhibiting Disclaimed Element

Patent, Patent Cases 2005

PatentlyOImage028SanDisk v. Memorex (Fed. Cir. 2005).

SanDisk holds a patent on Flash EEPROM with an improved architecture that extends the useful life of the device. 

When construing the claims, the trial court ruled that the claims did not cover systems with any memory cells grouped into non-partitioned sectors.  Because the accused devices included many sectors of memory cells that included non-partitioned sectors, the lower court granted defendants’ summary judgment motion that the devices did not infringe.

On appeal, the CAFC reviewed claim construction de novo, and reversed. First, the court looked at the plain language of the claim:

A method of operating a computer system including a processor and a memory system, wherein the memory system includes an array of non-volatile floating gate memory cells partitioned into a plurality of sectors that individually include a distinct group of said array of memory cells that are erasable together as a unit . . .

The appellate court found that the “including” transition, which is “a patent law term of art [meaning] ‘comprising.’”

Second, the appellate court rejected the district court’s finding that SanDisk had, during prosecution of the patent, disclaimed any cells grouped into non-partitioned sectors — finding that although the patent had been distinguished based on the partitioning, the disclaimer only applies to elements “subject to the claimed method, and no more.”  Thus, with open claim language, a device may be found to infringe a patent even if the device includes elements that were disclaimed during prosecution.

[T]here is no prior reason why that memory cell array or the discussion of it should be presumed to exhaust every cell on every EEprom in the “memory system” recited in the claim preambles. Given the open language in the claims, there is no reason for the court to read the prosecution argument with such a presumption in mind. Put differently, the reference to “each sector” means “each sector” subject to the claimed method, and no more. In short, SanDisk’s reading of this prosecution argument is at least reasonable. Thus, focusing on this passage alone, there is no “clear and unmistakable surrender” within the meaning of Golight.

Summary Judgment of Noninfringement Vacated and Remanded

In Nonprecedential Opinion, Judges Spar Over Use of Patent Specification in Claim Construction

Patent, Patent Cases 2005

PatentlyOImage024Izumi Products v. Koninklijke Philips (Fed. Cir. 2005) (NONPRECEDENTIAL)

In the wake of the CAFC’s recent foray into disposable razors, the appellate panel has now made its mark on the world of electric rotary razors.

In 2002, Izumi sued Philips for infringement of its electric razor patent that discloses a specialized recess in the blade that helps ensure that “shaving debris” don’t adhere to the blades. After construing the claims, the district court granted summary judgment of non-infringement in Philips favor. On appeal, the CAFC (Lourie, Newman, JJ.) found an error in the district court’s claim construction based on their review of the patent specification and logical analysis, but without any mention of a dictionary analysis.

In a concurring opinion, Judge Linn remarked the disputed term, “recess,” should be given the “full scope of its ordinary and customary meaning” and not be limited by definitions “improperly read” from the specification. 

 

Ex-Post Figures Allowed in Hypothetical Royalty Calculation

Patent,

ScreenShot017Honeywell v. Hamilton Sundstrand (HSC) (D. Del. 2005).

Conflicts between these two companies have already generated Federal Circuit precedent.  Now, in a case involving Honeywell’s patented power supply, the Delaware District Court has determined that HSC’s ex-post sales figures should be used in the calculation of a reasonable royalty.

Once infringement is found, a patentee is entitled to damages that are “in no event less than a reasonable royalty for the use made of the invention by the infringer.” 35 USC 284. The reasonable royalty is generally calculated through a legal fiction known as a “hypothetical negotiation” that would have occurred at a time before infringing activity began.

In this case, the patent issued in 2000, after HSC was already selling its allegedly infringing product. Demand changes due in part to the 9/11 tragedy caused product sales to increase dramatically in 2004 and 2005.  Honeywell argued that, despite their later date, these sales projections could not be ignored in the hypothetical negotiation.  HSC disagreed, arguing that post-negotiation sales projections should be rejected in the context of the hypothetical negotiation construct — particularly where pre-negotiation projections exist.

The court, noting a direct conflict between Fromson v. Western Litho (Fed. Cir. 1998) (later figures may be used) and the 2003 CAFC’s decision in Integra v. Merck KGaA (post-negation figures excluded because they change “risks and expectations of the parties”), sided with Honeywell and held that the post-negotiation figures could be used.

[T]he court is presented with two cases, both of which are binding, that dictate opposite results. . . . HSC suggests that the court should resolve the conflict by following the more recent case,

Integra. The court disagrees. The recent vintage of a case has no bearing on how well it was reasoned. In this case, the court is persuaded that the result dictated by Fromson is the most sensible. First, it promotes flexibility in damage calculations by not erecting an unnecessarily rigid barrier to relevant post-negotiation information. Second, it discourages infringement by placing the risk of success on the infringer. Third, it protects the quid pro quo underlying patent law by preventing a premature valuation of the patent. Finally, it permits a damage award more in keeping with the plain language of § 284 by adequately compensating the plaintiff for the “the use made of the invention” by the defendant. This list is probably not exhaustive, but is, in the court’s view, sufficient to demonstrate that Fromson should control in this case.

HSC’s motion to preclude post-negotiation sales figures denied.

Links:

Choosing the Next Judicial Appointment for the Court of Appeals for the Federal Circuit

Patent

In a recent article picked up by Howard Bashman, Legal/Technology reporter Brenda Sandburg began speculation on President Bush’s next potential appointment to the Court of Appeals for the Federal Circuit (CAFC). The CAFC consists of a panel of twelve judges plus several judges who have taken senior status.  There are currently no openings on the court.  However, it is expected that at least one of the judges will move to senior status this year — leaving room for a patent law expert to fill the slot. 

Contenders:

In a preemptive move, the Federal Circuit Bar Association has put its weight behind District Court Judge Ronald Whyte of San Jose who, for his part, is reportedly not dead-set against the idea.  Judge Whyte has received strong praise from both patent litigators and academics.  During his 12 year tenure as a district court judge, Whyte has handled more patent cases than any other district court judge in the country. 

The CAFC has the highest reversal rate of any federal appellate court, and many believe that a judge with trial experience is needed to bridge the gap between trial courts and the appellate court.  In an impromptu survey, one patent litigator commented “my bottom line is that I want a trial judge on the court — and as many as we can get!”

Because CAFC opinions rarely tread on political hot-button issues, appointments to the court are often made “inside the belt-way.”  One DC name that rises to the top is Judge Ed Damich, who is the Chief Judge of the Claims Court and former academic.  Three other judges who were mentioned include Judge Roderick McKelvie, who recently stepped down from his office as a Delaware District Court Judge, Judge James Holderman of the Northern District of Illinois, and Judge Kathleen O’Malley of the Northern District of Ohio. All of these judges “know a great deal about patent law, and command the respect of the Federal Circuit judges.”

The top litigator in-line for the job may be John Whealan, who has racked up an impressive record of wins before the CAFC as Solicitor for the United States Patent & Trademark Office.  Two other politically active possibles are Robert Armitage of Eli Lilly and Michael Kirk of the AIPLA.  There is another group advocating for a true academic on the court.  According to one law professor, “the Federal Circuit has heretofore paid little attention whatsoever to the large (and growing) body of legal and economic research on the patent system — and has even actively resisted such information at times.  Given its position in the US patent system, the dialog between academy and the court needs to be much better, and perhaps the appointment of an academic could move this along.”  Several professors suggested by Patently-O readers include John Duffy (clerk for Justice Scalia), Mark Lemley (Stanford), and Mark Janis (Iowa).  Of course, Berkeley’s Robert Merges may be the most likely professorial candidate.  Merges is well respected by both his peers and industry and his book (co-authored by John Duffy) sets the standard in law schools.

US Patent Office Wins Case Against The Invention Submission Corporation

Patent

PatentlyOImage017Stephen Nipper of the Invent-Blog directs us to to an interesting case regarding the Invention Submission Corporation.

Invention Submission Corporation v. Dudas (4th Cir. 2005).

In 2002, the USPTO launched a media campaign to counter invention promotion scams that included customer testimony from a disgruntled Invention Submission Corporation customer.  Although the ads did not mention Invention Submission by name, a reporter was able to uncover the customer’s identity and report on the link.

Invention Submission Corporation then sued the PTO, alleging that the advertising campaign was directed at Invention Submission to “penalize it and ultimately to put it out of business.”

The district court dismissed Invention Submission’s claim because it was not a “final agency action” that would be reviewable under the APA.  On appeal for a second time on this issue, the Fourth Circuit agreed and affirmed the district court’s dismissal for lack of subject matter jurisdiction.

Links:

Global argument in PTO response limits scope of all claims

Patent, Patent Cases 2005

Peer_networkSeaChange Int’l. v. C-Cor (Fed. Cir. 2005).

In another warning to attorneys, the CAFC has limited the term “network for data connection” to include point-to-point connections based on a patent applicant’s response to a first office action.

Seachange sued C-Cor for infringement of its patent on a computer cluster for redundantly storing data. After claim construction in favor of Seachange, C-Cor stipulated to infringement and then lost invalidity issues at trial. 

On appeal, C-Cor argued that the lower court’s improperly applied an ordinary meaning to claim terms whose scope had been disclaimed during prosecution. The CAFC agreed with C-Cor, finding that “Applicant’s response to the First Action was a deliberate surrender of claim scope, unmistakable in its effect because it is not suitable to multiple interpretations.”  Interestingly, the court rejected SeaChange’s arguments to distinguish claim 1 that specifically called out the point-to-point system from claim 37 that did not do so — finding that applicant’s “global arguments” in the Office Action Response applied to all the claims.

As Professor Joseph Miller correctly states, this case also shows that the use of dictionaries “appears to be alive and well in Federal Circuit claim construction.  In this case, the court relied extensively on The New IEEE Standard Dictionary of Electrical and Electronics Terms.

CAFC appears to give implicit deference in claim construction.

Patent,

PatentlyOImage014Northpoint Technology v. MDS (Fed. Cir. 2005).

Northpoint owns patents covering a method of communication through geosynchronous DBS satellites and sued MDS for infringement.  A jury found infringement, but also concluded that the claims were invalid.  The court then denied motions for JMOL & a new trial.

The appeal centered around claim construction of the term “directional reception range.”  In a split decision, the majority panel (Bryson, Schall, JJ) implicitly gave deference to the district court’s construction.  Rather than construing the claims de novo, the majority simply relied on the district court’s broad interpretation of the term — finding that Northpoint’s argument was a “misinterpretation of the trial court’s construction.”  Under the broad construction, the patents Northpoint were clearly invalid as anticipated.

Dissenting in part, Judge Dyk argued that the majority’s claim construction was “plainly incorrect.”  Using an internal analysis of claim language and the “object of the invention,” Judge Dyke found that the disputed term should have been much more narrowly construed.

Links:

Grokster Loses at Supreme Court

Patent,

MGM v. Grokster (2005).

by Cory Hojka

The Supreme Court, in a unanimous decision, has rejected the 9th Circuit’s holding that secondary liability could not apply to a defendant who has no direct knowledge of, nor direct control over, acts of copyright infringement committed by users of the defendant’s file-sharing network. The 9th Circuit’s error, according to Justice Souter’s majority opinion, was that such a ruling overextended the protection offered by the “substantial non-infringing” test in Sony Corp v. Universal Studios. Instead, the Court found that a device’s capability for lawful use is irrelevant to secondary liability when evidence shows that a party has promoted the usefulness of a product they distribute as a means to commit infringement. To support this conclusion for secondary liability, the Court explicitly incorporated into copyright law the inducement theory of liability from patent law:

[O]ne who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement of third parties.

In addition, the court addressed what evidence was sufficient to support intent toward inducement. First, it was compelling that both defendants had sought to satisfy a known source of demand for copyright infringement by pursuing former Napster users. Second, the Court focused on the defendants’ lack of attempts to discourage infringement by users of the file-sharing network. The Court though was careful to note in a footnote that such negative evidence alone is not sufficient, since that result would be contrary to Sony. Third, the Court held that the business models developed by the defendants lend support to a finding of intent, as their revenues were primarily dependent on the scale of infringement occurring on their networks.

< ?xml:namespace prefix ="" o /> 

Finally, in separate concurrences with equal support Justices Breyer and Ginsburg decided to duke it out over what are “substantial non-infringing” uses under Sony. Ginsburg argued that the burden of proof in Sony requires a showing of “substantial or commercially significant” non-infringing uses. To her, potential capability or future possible prospects of substantial non-infringing uses are insufficient. In contrast, Breyer contended that Grokster met the Sony standard based on the evidence provided and its potential for future non-infringing uses. Breyer concludes with an extensive argument that the overall harm to technological developments would outweigh the benefits to copyright holders if the Court were to move to a heightened standard in Sony.

Note: Cory Hojka is a law clerk at McDonnell Boehnen Hulbert & Berghoff LLP and a law student at the University of Chicago Law School in Hyde Park.

Decision:

Links:

Both Parties Lose Patent in Interference Proceeding

Patent,

PatentlyOImage013Gary Rasmusson v. SmithKline Beecham (Fed. Cir. 2005).

Finasteride, a 5aR inhibitor, is thought to be a useful drug in the fight against prostate cancer — as well as hair loss.  In 2001, the PTO declared an interference between an application by Rasmusson and one filed on behalf of SmithKline.  The dispute revolved around whether Rasmusson’ should be allowed to claim the beneficial filing date of its earlier applications — i.e., whether the early applications enabled the later drafted claims.

Relying on articles demonstrating that various multi-active 5aR inhibitors were effective in treating prostate cancer, Rasmusson argues that a person of ordinary skill in the art at the time of his applications would have believed that administering a therapeutically effective amount of finasteride could be used for treating human prostate cancer. For that reason, Rasmusson asserts that he did not need to provide any data to demonstrate the efficacy of finasteride.

Based on published articles and expert testimony, the CAFC agreed with the BPAI that the later drafted claims were not enabled: although it was known that 5aR inhibitors blocked DHT production, at that the time of filing, “it was not clear wither DHT or testosterone caused prostate cancer.” 

Rasmusson also argued that SmithKline’s patent claims were anticipated by a reference that disclosed the claimed method of administering finasteride. SmithKline, contended that the reference could not be anticipatory because is not enabling (since the reference purports to show data that finasteride could not be used to treat prostate cancer). Agreeing with Rasmusson, the CAFC found that “proof of efficacy is not required in order for a reference to be enabled for purposes of anticipation.”

In conclusion: Rasmusson loses interference to SmithKline, but SmithKline’s patent is anticipated.  Perhaps the parties should have settled. . . .

BlackBerry Patent Lawsuit Rises Again; NTP Responds to Patent Office Rejections

Patent, Patent Cases 2005,

PatentlyOImage009NTP v. Research-In-Motion (BlackBerry lawsuit).

In December 2004, the Federal Circuit released its opinion that pushed against the territorial bounds of patent law.  In that opinion, the CAFC found that U.S. patent law covers instances where infringing elements are located abroad — so long as the “control and beneficial use” of the infringing system is within U.S. territory.  Soon thereafter, RIM filed a motion for rehearing en banc that is still pending. 

The CAFC’s decision, strongly in favor of NTP, paved the way for a March 2005 “settlement” that reportedly included $450 million for NTP.  The original settlement announcement was based on a 1/2 page term-sheet reportedly signed by the parties.  As would be expected, 50 square inches of paper turned out to create a whole new level of disagreement between the parties who have been working through court mediation to flesh out the agreement.

Settlement Breakdown: In early June, the settlement issue came to a head and the parties staked out their positions on paper.  In a motion filed with the CAFC, RIM argues that the term-sheet was a settlement of the case, and, as such, the case is now moot.  RIM asked the CAFC to stay its decision on the for rehearing and remand the case to the district court to decide whether there has been a settlement.  On the other hand, NTP has argued that the term-sheet was not a settlement and that there was never a “meeting of the minds.”  The filed motions are attached below:

Reexamination: In a parallel action, the patents at issue in the case (owned by NTP) are undergoing reexamination at the USPTO.  As occurs in almost all inter partes and director-ordered reexaminations, the patent office has issued a non-final rejection in each NTP case that it has examined.  Although this first rejection is a good sign for RIM, a final decision in the reexam will not be any time soon. (i.e., will not be for several years).  NTP has the opportunity to file a response to the non-final rejection.  The PTO may then issue a final rejection, at which point NTP may ask for reconsideration, appeal to the PTO’s internal board (BPAI), and then appeal to the federal courts (i.e., the courts that have already determined that the patents are valid).

This week, NTP filed its first response to a rejection in the reexamination for Patent No. 5,631,946. In the response, NTP made no amendments to existing claims, but did add over 100 new claims — including many multiple dependent claims.  The filed papers are attached below (THESE ARE BIG FILES):

Bottom Line: Unless the parties come to another settlement agreement, this case will continue for several more years.

GAO issues report on Patent Office

Patent

The Government Accounting Office (GAO) recently issued its 2005 report to Congress on the USPTO.  The report focuses the PTO’s progress with in its “Strategic Plan” framework.  The report’s bottom line is that the PTO has made great strides in enhancing technical capabilities of its examination corps.  However, the Office is finding it difficult to attract and retain qualified examiners.  Among problems cited by the report is a lack of a “collaborative culture” and an employee reward system that is based on outdated information.

Read the Report.

Case on Obviousness Jurisprudence Gains Support — Microsoft Files Amicus Brief

Patent, Patent Cases 2005

PatentlyOImage025_smallKSR International v. Teleflex (On Petition for Certiorari)

Strong support is beginning to mount for a small case that may have major consequences on the patent law landscape.

In a petition for a writ of certiorari, KSR has asked the Supreme Court to review the “teaching-suggestion-motivation test” for obviousness that has been a stalwart of Federal Circuit jurisprudence for twenty years.  During that time, the Supreme Court has not heard a single obviousness case.  Noted law professor John Duffy is on the KSR brief, which argues that the CAFC’s obviousness test goes against Supreme Court precedent, against precedent of other circuits, and is bad policy.

Now, A consortium of five major corporations, including Microsoft, Cisco, and Hallmark have filed as amicus supporting the petition.  Their brief argues that the current structured test for obviousness is too easy a hurdle for patentees and that the formalities of the test undermines courts ability to truly determine whether an invention is obvious to one skilled in the art.

In addition, Teleflex has filed its opposition to the petition — arguing that (1) obviousness is well settled law and need not be revisited; (2) the CAFC’s test is consistent with Graham; and perhaps most importantly (3) this case does not hinge on the obviousness issue.

Documents:

  • Party Briefs
  • Amicus Briefs

    • Links:

    Prima Tek II v. Polypap

    Patent, Patent Cases 2005,

    PatentlyOImage008Prima Tek II v. Polypap (Fed. Cir. 2005).

    Prima Tek and Polypap both sell disposable devices for holding flowers.  Prima sued Polypap for infringement of two of its related patents.

    After first construing the claims, the Southern District of Illinois court granted summary judgment of non-infringement to Polypap.  That decision was reversed in 2003 based on an error in claim construction.

    On remand, and after a bench trial, the district court found the patents not invalid and infringed and thus issued an injunction against Polypap.  Now Polypap appeals the new claim construction.  And, the CAFC has reversed once again, finding that the district court erred by adding a limitation to the term “floral holding material” that deviated from the term’s ordinary meaning.

    Based on the new construction, the CAFC determined that the claims were anticipated based on a piece of prior art considered during prosecution — thus deciding the case.

    In a seeming jab at the Patent Office, the majority noted that the whole patent system “depends primarily on the Patent and Trademark Office’s (“PTO’s”) care in screening out invalid patents during prosecution.” In this case, the court found that the PTO had not lived up to its gatekeeper role.

    CAFC Finds Jurisdiction To Hear Declaratory Judgment Issues After Patentee Files Covenant Not To Sue

    Patent, Patent Cases 2005

    PatentlyOImage007Fort James Corp. v. Solo Cup (Fed. Cir. 2005).

    Fort James sued Solo for infringement of its patents on paper plates. After a trial, the jury found that the patents were not invalid but were likewise not infringed.  Solo then sought attorney’s fees and a counterclaim of unenforceability.  The district court, however, dismissed Solo’s counterclaim as moot after Fort James submitted a covenant not to sue on the patents at issue. Solo appealed that ruling.

    On appeal, the CAFC reversed — finding that the “district court’s literal application” of CAFC precedent was improper.

    The district court erred as a matter of law in holding that it did not have jurisdiction to hear Solo Cup’s counterclaim. The case is remanded for resolution of the issues properly before the court prior to its order to bifurcate, namely Solo Cup’s claims of unenforceability on the basis of inequitable conduct and its request for attorney fees pursuant to 35 U.S.C. § 285.

    Citing the recent Teva v. Pfizer case, Judge Schall argued in dissent that “Fort James’s covenant not to sue eliminated any live case or controversy between the parties and thereby rendered Solo Cup’s unenforceability counterclaim moot.”

    Patently-O Patent Law Blog wins TechnoLawyer Award as Best Practice Area Blog

    Conference or CLE, Patent

    TLAwards_2005winner

    I am happy to announce that Patently-O was awarded the TechnoLawyer @ Award as the Favorite Practice Area Blog for 2005.  This award means a lot to me because it was Patently-O readers who made it happen.  I would like to personally thank everyone who took time to vote. (Drop me a line and I’ll take you out to coffee).

    Runners-up in the category include Sabrina Pacifici excellent law & technology blog beSpacific and Broc Romanek’s corporate & securities law blog at TheCorporateCounsel.net.  Fellow Chicagoan Bryan Sims of James, Gustafson and Thompson was named “Technolawyer of the year.”

    Who’s Your Inventor?: Contradictory Declarations Leads to Summary Judgment Reversal

    Patent, Patent Cases 2005

    ScreenShot016Checkpoint Systems v. All-Tag Security  (Fed. Cir. 2005).

    by Marcus Thymian.

    Checkpoint asserted its patent on disposable, deactivatable security labels against All-Tag and Sensormatic, a customer of All-Tag.  The district court granted summary judgment of invalidity to All-Tag and Sensormatic under 35 U.S.C.  § 102(f) for failing to name an inventor.  In support of its motion for summary judgment, All-Tag had submitted recent declarations of three people, including the named inventor and the supposed omitted inventor, stating that the sole named inventor was one of two actual inventors.

    The Federal Circuit reversed and remanded, agreeing with Checkpoint that earlier declarations by the same three people, made during prosecution, contradicted the more recent declaration, thus creating a “clear” genuine issue of material fact on the issue of inventorship.

    The Court frames several issues that are potentially more interesting than the main inventorship issue, but declines to rule on those issues, given its reversal.  These issues include:  (1) applicability of the doctrine of assignor estoppel to a party that is merely in privity with the assignor; (2) applicability of the corroboration rule to testimony by inventors/assignors challenging validity; and (3) whether 35 U.S.C. § 256 (allowing the patent office to correct inventorship upon application of the parties/assignees) could be used to correct inventorship, if it were found to be incorrect in this case.

    Marcus Thymian is a partner at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago.  Concentrating primarily on the electrical, software, and mechanical arts, he is experienced in planning, creating, enforcing, and defending against patent portfolios. [Marcus Thymian’s Bio]

    [Copyright 2005 – Originally published at www.patentlyo.com]

    Supreme Court to Reexamine the Interplay Between Patents and Unlawful Tying Agreements

    Patent, Patent Cases 2005,

    IllinoisToolThe Supreme Court has decided today to hear Illinois Tool Works v. Independent Ink (04-1329). 

    In this case, the Court of Appeals for the Federal Circuit determined that a rebuttable presumption of market power sufficient to restrain trade under antitrust law arises from the patentee’s possession of a patent used in an explicit tying agreement.

    The suit involves an ink jet device patented by Trident, a subsidiary of Illinois Tool Works.  Independent Ink manufactures unpatented ink that is usable in Trident’s patented device.  However, Trident’s license/purchase agreements require use of Trident’s ink under certain circumstances.

    Independent Ink sued alleging an illegal tying arrangement in violation of Section 1 of the Sherman Act.  The district court dismissed the claim on summary judgment, but the CAFC reversed — ordering the lower court to presume market power based on the patent tying agreement.

    In its opinion, the CAFC admonished the district court for not following clearly established Supreme Court precedent and for dismissing the High Court’s holdings as “vintage.”  The appellate panel noted that, although it may be time to abandon the doctrine, it is up to the Supreme Court or Congress to expressly overrule its own precedent — this prerogative does not lie with the district courts.  The High Court is expected to hear the case next fall.

    Amicus briefs in the petition were filed by the AIPLA, ABA, Pfizer, and the IPO.

    Link:

    Will US Courts Adjudicate Foreign Patents or Will Comity Prevail?

    Patent, Patent Cases 2005

    VodaCatheter

    Voda v. Cordis Corp. (Fed. Cir. 2005)

    The past year has seen an expansion of the reach of U.S. patent laws based on the Federal Circuit’s decisions in Eolas v. Microsoft and RIM v. NTP. A third case in the pipeline is now ready to burst at the seams.

    In August 2004, an Oklahoma district court granted Dr. Jan Voda’s motion to amend the complaint to add claims of infringement of five foreign patents. In February, the CAFC granted an interlocutory appeal request, which will likely be heard this fall.

    Dr. Voda is a cardiologist in Oklahoma City who has patented a number of catheters and other medical devices used in the practice of medicine. Voda has alleged that Cordis has infringed patents both on U.S. soil and abroad. In order to save resources and establish a uniform judgment, Voda has asked, and the court has granted, permission to consolidate the world-wide patent issues into a single case.

    In an impressive brief, Cordis argues forcefully that the supplemental jurisdiction statute (28 USC 1637) does not apply to foreign patent claims.

    Two major IP organizations (AIPLA & IPO) have recently filed amicus briefs asking the CAFC to reverse the lower court’s decision — essentially arguing that “comity” should rule. Of course, the CAFC only months ago rejected comity arguments in both Eolas and RIM. Noted commentator and professor Hal Wegner has listed Voda atop his “Top Ten Pending Patent Cases.”

     

    Links:

    “Optional” disclosure in prior art reference overcomes negative claim limitation.

    Patent,

    Upsher-Smith Labs. v. Pamlab (Fed. Cir. 2005).

    Upsher-Smith asserted to patents against Pamlab.  The patents cover a vitamin supplement consisting of vitamin B12 and other active components.  The claims also provide a negative limitation that the supplement is “essentially free of antioxidants.”

    The district court dismissed the suit — finding the patents anticipated and obvious based on prior art that disclosed the identical compounds but that “optionally includes” antioxidants.

    On appeal, the CAFC affirmed — finding that the optional inclusion of the antioxidants teach “vitamin supplements that both do and do not contain antioxidants. . . . Consequently, Pamlab presented a prima facie case of anticipation.” 

     

    On Remand: Knorr-Bremse District Court Finds Willfulness Even Without Adverse Inference Rule

    Patent,

    KnorrBremseBrakeKnorr-Bremse v. Dana Corp. (E.D. Va. 2005).

    In a 2004 landmark decision, an en banc panel of Federal Circuit judges found that “no adverse inference that an opinion of counsel was or would have been unfavorable flows from an alleged infringer’s failure to obtain or produce an exculpatory opinion of counsel.”Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., et al., 383 F.3d 1337 (Fed. Cir. 2004).  Because the adverse inference comprised a portion of the district court’s decision, the CAFC vacated the original finding.

    On remand, Judge T.S. Ellis, III in the Eastern District of Virginia took a new look at the issues of treble damages for willful infringement and attorney’s fees under the “exceptional case” standard.  In doing so, the court found that even absent the prohibited adverse inference, there were sufficient factors supporting the finding of willful inference.

    [T]he totality of the circumstances presented here — and wholly without the now-proscribed adverse inference — still compels the conclusion that defendants’ use of the Mark II air disk brake, and indeed their continued use of the Mark II air disk brake throughout the instant litigation, amounted to willful infringement of the ‘445 patent.

    Regarding attorney fees, the court noted that “an award of attorney’s feed does not automatically follow from a finding of willful infringement.”  In this case, the court determined that Knorr had “failed to establish by clear and convincing evidence that defendants engaged in any bad faith litigation or inequitable conduct” and the defendant’s willful infringement was “not so egregious . . . as to justify an award of attorney’s fees.”