NOVARTIS v. ABBOTT (JMOL of noninfringement of Novartis patents affirmed)

Patent, Patent Cases 2004

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NOVARTIS PHARMACEUTICALS CORPORATION v. ABBOTT LABORATORIES (Fed. Cir. July 8, 2004).

Novartis brought a patent infringement suit against Abbott based on its patented cyclosporin compositions. (U.S. Patent 6,007,840). A jury determined that Abbott infringed claim 81 of the ‘840 patent. However, the district court issued a judgment as a matter of law (JMOL) of noninfringement in Abbott’s favor.

On appeal, the appellate panel found that the district court’s claim construction was erroneous, but that those errors were harmless to the JMOL decision. Affirmed.

In dissent, J. BRYSON argued that the court unduly applied the the specific exclusion principle to narrowly construe the term “lipophilic component.”

The statement on which the court relies refers to the role performed by excess amounts of the substance that serves the role of the surfactant in the claimed composition. The quoted language indicates that the composition of the invention must have at least three components in addition to the cyclosporin, as required by claim 81. In addition, it contemplates that the substance that serves as the surfactant may also serve as part of either the hydrophilic or the lipophilic component. The quoted language therefore makes clear that the composition may not consist of only two components in addition to the cyclosporin, as would be the case if one ingredient served as both the surfactant and the lipophilic component in the composition. However, the quoted language does not address the case presented by Abbott’s composition, which contains three components in addition to the cyclosporin, and in which a hydrophilic surfactant serves as the surfactant, while Span 80 serves the function of the lipophilic component (dissolving and carrying the cyclosporin). Thus, because in Abbott’s composition Span 80 does not serve as the surfactant referred to in claim 81, the quoted language from the specification does not apply to Abbott’s composition. For that reason, I agree with Novartis that, where another substance serves as the hydrophilic surfactant, the specification does not disclaim the use of a lipophilic surfactant such as Span 80 as the sole component of the lipophilic component of the claimed invention. I therefore do not find a disclaimer of subject matter in the specification. A fortiori, I do not find a specific exclusion of subject matter for purposes of the doctrine of equivalents.

SEARFOSS v. PIONEER

Patent, Patent Cases 2004

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SEARFOSS v. PIONEER CONSOLIDATED CORPORATION (Fed. Cir. June 6, 2004)

Searfoss appealed the district court’s claim construction and resulting summary judgment of non-infringement of its patented truck bed covers. (U.S. Patent 5,031,955).

Because a finding of infringement under the doctrine of equivalents would vitiate the requirement of a direct connection through an actuation means, no reasonable jury could find that the accused device is insubstantially different than the claimed invention. Summary judgment of non-infringement is thus appropriate.

Because the district court correctly construed the disputed claim terms of the ’955 patent and thus Pioneer did not infringe claim 3 under the doctrine of equivalents, the district court’s entry of summary judgment on non-infringement is AFFIRMED

TypeRight Keyboard v. Microsoft

Patent, Patent Cases 2004

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TYPERIGHT KEYBOARD CORPORATION v. MICROSOFT CORPORATION (Fed. Cir. June 6, 2004).

Plaintiff TypeRight appealed the district court’s summary judgment based on invalidity of its patented ergonomic keyboards. (U.S. Patent 5,372,441 and 5,503,484). Additionally, Microsoft cross-appealed the district court’s dismissal (without prejudice) of its claims for non-infringement.

First, the court dismissed the cross-appeal for lack of jurisdiction.

A party that is not adversely affected by a judgment lacks standing to appeal. . . . Because Microsoft’s rights under the judgment of invalidity are actually broader than its rights would be under a judgment of non-infringement, Microsoft has not been adversely affected by the district court’s judgment. Because there is no jurisdiction for the cross-appeal, we dismiss the cross-appeal

Next, the appellate panel reversed the finding of invalidity and remanded the case.

Summary judgment should not be denied simply because the opposing party asserts that the movant’s witnesses are not to be believed. However, summary judgment is not appropriate where the opposing party offers specific facts that call into question the credibility of the movant’s witnesses.

Here, TypeRight pointed to specific facts that tend to discredit the testimony of [Microsoft’s witnesses]. These facts create a genuine issue as to the credibility of Microsoft’s witnesses. Thus, while the evidence is sufficient to support a jury finding that the [] document is prior art, a reasonable jury could ultimately conclude otherwise. In such circumstances, “[t]he court may not assess the credibility of testimony when granting summary judgment.”

TI Group Automotive Systems v. VDO

Patent, Patent Cases 2004

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TI Group Automotive Systems v. VDO (Fed. Cir. June 30, 2004) [PDF].

TI Group is an automotive supplier that makes fuel tanks, fuel pump assemblies, and complete fuel tank systems. (U.S. Patent 4,860,714). TI Group has sold over thirty million fuel pump assemblies that embody the ’714 patent. VDO began selling an assembly that “were essentially drop-in replacements.”

After a jury verdict of willful infringement, the district court granted a JMOL in VDO’s favor based on non-infringement but denied VDO’s JMOL motion for invalidity.

Because we affirm some of the district court’s claim constructions, and because as to those limitations TI Group points to no evidence supporting the jury’s finding of infringement, we affirm the district court’s grant of VDO’s JMOL motion with respect to infringement. However, because we have broadened a number of the district court’s claim constructions, thus affecting the invalidity analysis, we vacate the district court’s denial of VDO’s JMOL motion with respect to invalidity and remand that issue for further proceedings consistent with this opinion.

Competitive Tech. v. Fujitsu: No Jurisdiction for Plasma Screen Appeal

Patent, Patent Cases 2004

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COMPETITIVE TECHNOLOGIES, INC., and UNIVERSITY OF ILLINOIS v. FUJITSU LIMITED and FUJITSU HITACHI PLASMA DISPLAY LIMITED (Fed. Cir. June 30, 2004).

In a patent infringement suit against Fujitsu over plasma screen technologies, the University of Illinois sought to have some of Fujitsu’s counterclaims dismissed on Eleventh Amendment sovereign immunity grounds. (U.S. Patent 4,866,349 and 5,081,400). The Northern District of California court denied the University’s motion to dismiss the claims. U of I appealed.

Without reaching a decision on the merits, the Federal Circuit (DYK, MAYER, GAJARSA) dismissed the University’s appeal for lack of appellate jurisdiction.

The judgment of the district court is not final under 28 U.S.C. § 1291, and the district court has not issued the certificate required by either Federal Rule of Civil Procedure 54(b) or 28 U.S.C. § 1292(b).

The appellate panel found that the district court’s decision on the issue of sovereign immunity did not “conclusively determine” that question. Thus, the case did not fall under the limited Cohen exception that could have created a jurisdictional basis.

Patent Infringement: No summary judgment of anticipation based on prepared model

Patent, Patent Cases 2004,

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NYSTROM v. TREX Co. (Fed. Cir. June 28, 2004).

In an appeal of a summary judgment in a patent infringement case involving specially manufactured boards for decking, the Federal Circuit reversed and remanded. (US Patent 5,474,831).

Because the district court erred in its constructions of the claim terms “board,” “manufactured to have,” and “convex top surface,” the district court’s grant of summary judgment of non-infringement of claims 1-15 of the ’831 patent is reversed.

The panel also reversed the district court’s judgment of invalidity.

The district court’s acceptance of TREX’s invalidity arguments based on models made from drawings contained in the Zagelmeyer patent was incorrect. The basis of the district court’s summary judgment of invalidity was a model that TREX developed based on that reference, and not on drawing dimensions or a written disclosure of dimensions contained directly in the patent itself. Under the principles set forth in our prior cases, the speculative modeling premised on unstated assumptions in prior art patent drawings cannot be the basis for challenging the validity of claims reciting specific dimensions not disclosed directly in such prior art. Thus, we conclude that the district court erred in granting summary judgment of invalidity based on TREX’s models.

In dissent, Judge Gajarsa found that the term “board” should be limited to wooden boards.

Hockerson-Halberstadt v. JSP and FUBU

Patent, Patent Cases 2004

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Hockerson-Halberstadt, Inc. v. JSP Footware, Inc. and FUBU The Collection (Fed. Cir. June 23, 2004) (not citable as precedent)

(RADER) The appellate court reversed a summary judgement against the patentee, holding that the plaintiff had met its section 287 notice obligation by sending a letter to a third party who was thought to control manufacture of the patented stabilized athletic shoes. (U.S. Patent 4,322,896).

In dissent, MICHEL argued that the section 287 notice requirement should not be satisfied by giving notice to a third party that has no corporate relationship with the defendant except for a trademark license.

Linear Technology v. Impala Linear (Patent Claim Construction)

Patent, Patent Cases 2004

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Linear Technology Corporation v. Impala Linear Corp., Toyoda Automatic Loom Works, Maxim Integrated Protduct, Unitrode Corp., and Ronald Vinsant (Fed. Cir. June 17, 2004).

After losing a summary judgment in an infringement suit, Linear mounted this appeal based on claim construction and other errors. The technology at suit related to voltage regulators designed to provide constant voltage output from a fluctuating input. (U.S. Patent 5,481,178).

Because the district court erred in construing the “circuit,” “vary the duty cycle,” and “simultaneously off” claim limitations of the ’178 patent, we vacate the judgment of non-infringement and remand for further consideration. We further vacate the district court’s summary judgment of no contributory infringement or inducement of the current reversal method claims of the ’178 patent, because genuine issues of material fact have been raised concerning Maxim’s contributory infringement or inducement. Because the district court did not abuse its discretion on Maxim’s cross-appeal in denying Maxim’s motion for summary judgment that Vinsant was a joint inventor of the ’178 patent, we affirm.

The appellate panel held that the district court had improperly found that the term “circuit” was a means-plus-function limitation and that the district court had failed to apply the “rebuttable presumption that § 112 6 does not apply.”

We hold that because the term “circuit” is used in each of the disputed limitations of claims 1, 44, 55, and 57 of the ’178 patent with a recitation of the respective circuit’s operation in sufficient detail to suggest structure to persons of ordinary skill in the art, the “circuit” and “circuitry” limitations of such claims are not means-plus-function limitations subject to 35 U.S.C. § 112 6. The district court’s holding to the contrary was an error of law.

The appellate panel also found error in the district court’s exclusion of PWM circuits from other means language in the claims.

Linear cites technical textbooks and electronic parts catalogs indicating that PWM circuits are well-known circuit structures to persons of skill in the art. Thus, we conclude that the district court erred in excluding PWM circuits.

…

In Re Jack Richard Simpson

Patent, Patent Cases 2004

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In Re Jack Richard Simpson (Fed. Cir. June 9, 2004) (not citable as precedent).

In an appeal from the Board of Patent Appeals and Interferences (“Board”) for a pending patent application, the Court affirmed the Board’s rejection of Simpson’s claims as anticipated by U.S. Patent 5,161,442 under 35 U.S.C. 102(b). (The application involved technology for cutting cardboard.) Although not explicitly described in the prior art, the Court found anticipation because the reference was “inherently ‘capable’ of performing the functions claimed by Simpson.”

University of California v. Actagro (Preliminary Injunction Vacated)

Patent, Patent Cases 2004

The Regents of the University of California and Biagro Western Sales, Inc v. Actagro, LLC (Fed. Cir. June 9, 2004) (not citable as precedent).

In an infringement suit involving phosphorous fertilizer, the Federal Circuit panel vacated a preliminary injunction against Defendant Actagro because Actagro raised “a substantial question as to the validity of the ‘200 patent.” (U.S. Patent 5,514,200).

Given the evidence offered by Actagro, which on its face suggests that the SSP reference is a concentrated phosphorus fertilizer as contemplated by the claims, we find that Actagro has raised a substantial question as to the validity of the ‘200 patent. For that reason, we must conclude that the first prerequisite for entry of a preliminary injunction is lacking.

Watson v. H.J. Heinz Co.

Patent, Patent Cases 2004

Richard Watson v. H.J. Heinz Co. (Fed. Cir. June 8, 2004) (nonprecedential opinion)

In this trade secret case, the appellate panel held that Watson had no legal standing to sue Heinz for allegedly stealing his “trap cap” design for squeeze bottles of ketchup. Watson had filed for bankruptcy and not listed any trade secrets as assets. The court found that any property rights in the trade secret passed to the bankruptcy estate and no longer belong to Watson.

Animatics v. Quicksilver Controls

Patent, Patent Cases 2004

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Animatics Corp. v. Quicksilver Controls, Inc. and Donald P. Labriola II (Fed. Cir. June 8, 2004) (nonprecedential opinion)

After a hung jury could not decide the issue of infringement, the judge granted a JMOL of infringement as to some claims and noninfringement/invalidity as to others. The Federal Circuit affirmed in part, vacated in part, and remanded for further findings.

We agree with Quicksilver’s contention that the district court’s reliance on claim differentiation was legal error. Claim differentiation is a judicial doctrine that cannot be used to override statute.

Metabolite Labs. v. LabCorp

Patent, Patent Cases 2004

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Metabolite Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings (doing business as LabCorp) (Fed. Cir. June 8, 2004)

The Federal Circuit (J. Rader) affirmed the jury verdict of indirect infringement and breach of contract, and affirmed the district court’s award of over $8 million in damages to Metabolite (including damages for willfulness).

As expected, the appellate court ruled that the same claim construction should be used for damage calculations as is used for infringement and validity analysis.

This court declines the invitation to apply a different claim construction for computation of damages than for infringement liability.

Additionally, the court refused to vacate the willfullness damages even though the district court did not examine any of the Read factors in its decision.

That the district court did not explicitly set forth its rationale for awarding Metabolite enhanced damages based on LabCorp’s willful indirect infringement is not fatal to its decision…. The district court’s failure to discuss the Read factors, although contrary to this court’s strong preference for the enumerated bases underlying its decision, in this case was at most harmless error.

Finally, the Appellate Panel held that no justification for a permanent injunction is required once infringement is found.

[T]he district court properly granted the injunction because LabCorp was found to infringe. See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 842 F.2d 1275, 1281 (Fed. Cir. 1988) (“[A]n injunction should issue once infringement has been established unless there is a sufficient reason for denying it.”).

W.E. Hall v. Atlanta Corrugating

Patent, Patent Cases 2004,

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W.E. Hall Company, Inc. v. Atlanta Corrugating, LLC (Fed. Cir. June 7, 2004)

In a patent infringement suit, the Federal Circuit affirmed the lower court’s claim construction and noninfringement summary judgment. (U.S. Patent 4,838,317, on a Hydraulically Efficient Ribbed Pipe)

Appellant argued that ambiguity in the written description and prosecution history warranted a special meaning for several contested terms. The court disagreed:

Where, as here, the written description and prosecution history are ambiguous as to whether the patentee used the claim terms inconsistent with their ordinary and customary meanings, it is the ordinary and customary meanings that the terms obtain.

Honeywell v. Hamilton Sundstrand

Patent, Patent Cases 2004

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Honeywell International, Inc. (formerly known as AlliedSignal Inc.) v. Hamilton Sundstrand Corp. (formerly known as Sundstrand Corp.) (Fed. Cir. June 2, 2004) (en banc)

During prosecution, Honeywell had cancelled its broad independent claim and rewritten dependent claims in independent form. (U.S. Patent No. 4,380,893). The jury found that the patents in suit were valid and, although not literally infringed, infringed under the doctrine of equivalents. The district court entered judgment against Sundstrand.

On appeal, the Court extended Festo in holding “that the rewriting of dependent claims into independent form coupled with the cancellation of the original independent claims creates a presumption of prosecution history estoppel.” The case was remanded for a determination as to whether the patentee can rebut the presumption of surrender under Festo.

In dissent, J. Newman argued that the holding will lead applicants to file more independent claims and fewer dependent claims — thus complicating the job of the patent office.

Hamilton Sundstrand is a United Technologies Corporation (UTC).

Cordis v. Boston Scientific

Patent, Patent Cases 2004

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Cordis Corp. v. Boston Scientific Corp. and SciMed Life Systems, Inc. (Fed. Cir. May 28, 2004) (Unpublished Opinion)

The appellate panel affirmed the lower court’s denial of Cordis’s motion for a preliminary injunction.

The most interesting aspect of the opinion involves the public interest component of the PI analysis. Historically, courts have found that the public interest “lies in upholding the the exclusive rights of a patentee.” See, Pfaff v. Wells, 525 U.S. 55. In this case, however, the Court held that the public interest swings the other direction:

for good reason, courts have refused to permanently enjoin activities that would injure the public health…. In this case, a strong public interest supports a broad choice of drug-eluting stents, even though no published study proves the superiority of either … stent.

Read more about the Cordis lawsuits here.

Jacobs v. Nintendo

Patent, Patent Cases 2004

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Jacobs v. Nintendo of America, Inc. (Fed. Cir. May 28, 2004).

Jacobs owns a patent on a tilt sensitive controller. (U.S. Patent No. 5,059,958). In a prior suit over the same technology, Jacobs settled with Analog. Under the terms of the settlement agreement, Analog was given a full license to practice the patented technology.

In the present case, Jacobs sued Nintendo, asserting that Nintendo’s “Kirby Tilt ‘n Tumble” for Game Boy. Nintendo responded, and the lower court agreed, that Nintendo’s actions fell under the settlement agreement, since the accelerometers for the game were purchased from Analog.

On appeal, the Federal Circuit (J. Bryson) affirmed the lower court’s dismissal on summary judgment.

We agree with the district court that the clause granting Analog the right to sell its accelerometers for use in tilt-sensitive control boxes barred Jacobs from interfering with that right by prohibiting Analog’s customers from using the accelerometers for that authorized purpose by making, using, and selling control boxes incorporating Analog’s devices. That interpretation is in accordance with the basic contract law principle that a party may not assign a right, receive consideration for it, and then take steps that would render the right commercially worthless.

Additionally, the Appellate Panel held that the “noninfringing use” doctrine did not apply.

The “noninfringing use” doctrine applies when a patentee or its licensee sells an article and the question is whether the sale carries with it a license to engage in conduct that would infringe the patent owner’s rights. In that setting, absent an express agreement between the parties, determining whether the sale conveys with it the implied right to use the article in an infringing manner may depend on whether there is any noninfringing use for the article. If there is no noninfringing use, it may be reasonable to infer that there has been “a relinquishment of the patent monopoly with respect to the article sold.” United States v. Univis Lens Co., 316 U.S. 241, 249 (1942) … This case is quite different … because the [settlement] agreement must be understood to authorize Analog to sell its accelerometers for [otherwise infringing] uses.