Medrad filed suit against MRI Devices for allegedly infringing Medrad’s patented radio frequency (RF) coils used in magnetic resonance imaging (MRI). The district court granted a partial summary judgment of invalidity after construing the claims of the patent.
On appeal, the CAFC struggled to give meaning to a claim that “itself provides little guidance.”
Interpreting the term “substantially uniform,” the court rejected Medrad’s argument that the “court may not look to how an invention functions in determining the meaning of claim terms” — finding that proposition “as unsound as it is sweeping.”
We cannot look at the ordinary meaning of the term . . . in a vacuum. Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history. Quoting DeMarini Sport (Fed. Cir. 2001).
Basing its decision on (1) claim language, (2) the specification, and (3) expert testimony, the appellate court found that “substantially uniform” in reference to a magnetic field meant that the magnetic field is sufficiently uniform to obtain useful MRI images.
In a dispute over a method of sequential atomic layer deposition (ALD), ASM sued Genus for infringement of its patents. After construing the claims, the magistrate granted summary judgment of non-infringement in favor of Genus. ASM appealed the construction.
On appeal, the CAFC affirmed, finding that the district court was "on firm ground."
The disputed construction involved the term "evacuate." ASM argued that evacuate should encompass use of an inert gas to push gases out. However, the Appellate Panel found that, "when the specification and the prosecution history are read as a whole, it becomes clear that the insertion of inert gas may help render the process of evacuation more efficient, but is not part of the evacuation itself."
At the district court level, Thomas Woolston, creator of the MercExchange and Patently-O Reader, won a $35 million patent infringement suit against eBay for infringement of his patents covering live internet auctions. On March 16, 2005, the Federal Circuit released its decision on appeal, reversing the decision in-part, but setting the stage for a permanent injunction against eBay.
On appeal, the Federal Circuit partially overturned the district court’s decision, finding that at least one of the MercExchange patents invalid but vacating the lower court’s ruling that another patent was invalid.
Perhaps most importantly, MercExchange challenged the district court’s refusal to issue a permanent injunction against eBay’s use of the invention. The CAFC agreed with MercExchange, that the district court “did not provide any persuasive reason that this case is sufficiently exceptional to justify the denial of a permanent injunction.” Specifically, the CAFC found that the fact that MercExchange expressed a willingness to license was not a valid reason for depriving it of the right to an injunction to which it would otherwise be entitled.
If the injunction gives the patentee additional leverage in licensing, that is a natural consequence of the right to exclude and not an inappropriate reward to a party that does not intend to compete in the marketplace with potential infringers. . . . We therefore see no reason to depart from the general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances.
Of course, there is only a very small likelihood that eBay would allow its servers to be shut-down rather than settle the case. In addition, it is unclear how an injunction would operate in this case, although it would most likely only alter e-bay’s ‘buy it now’ feature.
Finally, the appellate panel affirmed the portion of the judgment denying an award of enhanced damages or attorney fees for MercExchange.
AFFIRMED IN PART, REVERSED IN PART, VACATED IN PART, and REMANDED.
The MercExchange patents are also under reexamination at the Patent Office. However, if the litigation concludes before the reexam is complete, there is some question as to whether the reexam can be used by eBay to re-open the case. One issue stems from the 1803 case of Marbury v. Madison where the Supreme Court held that the Judiciary, not the Executive Branch that determined the law. In this case, the PTO (Executive Branch) would be telling the Judiciary to change its mind.
March 16, 2005 04:02 PM US Eastern Timezone eBay Statement on U.S. Court of Appeals Ruling in MercExchange Case
SAN JOSE, Calif.–(BUSINESS WIRE)–March 16, 2005–eBay (Nasdaq:EBAY) is pleased with today’s decision by the U.S. Court of Appeals that invalidates one of MercExchange’s patents, and as a result, throws out all the related damages. Looking forward, we believe that any injunction that might be issued by the District Court with respect to the other patent will not have an impact on our business because of changes we have made following the District Court’s original verdict. The U.S. Patent and Trademark Office is actively reexamining all of MercExchange’s patents, having found that substantial questions exist regarding the validity of MercExchange’s claims. The Patent and Trademark office has already initially rejected all of the claims of one of MercExchange’s patents. We are confident in our position against MercExchange and do not believe that these matters will have any impact on our business.
The legal saga involving NTP’s patents covering Research-In-Motion’s BlackBerry (R) technology appears to be over. According to news reports, RIM has settled the BlackBerry Lawsuit for $450M (US).
The lawsuit did produce what appears to be an expansion of U.S. patent laws to cover infringing activity that partially occurs on foreign soil. However, the settlement leaves a number of open questions regarding application of the newly expanded theory of liability.
NOTE: The drawing above was used in RIM’s brief at the U.S. Federal Circuit Court of Appeals to graphically show how a substantial portion of the ‘infringing’ activity occurred on foreign soil. The Court rejected RIM’s argument that activity across the border could not create liability under the U.S. patent laws.
V-Formation v. Benetton Group & Rollerblade, Inc. (Fed. Cir. 2005).
By Marcus Thymian
In its March 15 decision, the Federal Circuit affirmed a district court’s grant of summary judgment of non-infringement of the claims of three patents relating to in-line skate technology. The patents were directed to a particular frame design for attaching the wheels to the boot. To provide flexibility in frame and wheel adjustment of a skate, the frame included two sidewalls “releasably attached” by a plurality of fasteners to toe and heel plates of the skate. (For example, see U.S. Patent No. 5,873,584).
The dispute centered on whether rivets could serve as fasteners that “releasably attach.” The embodiments set forth in the patents-in-suit utilized screws as the releasably attaching fasteners. The district court had construed the term “releasably attaching” to mean that the fasteners “must permit the sidewalls to be easily removed and replaced” and determined that one skilled in the art would not consider rivets to fall under that definition. In reaching that conclusion, the district court looked to the specification of the patents-in-suit, as well as the specification of a patent (the “Meibock patent”) cited on the face of one of the patents-in-suit. Finally, the district court supported its construction by referring to an uncontrolling decision of the Federal Circuit that interestingly addressed the unremovable nature of rivets in in-line skates: “Screws, unlike rivets and laminates, are meant to be unscrewed, that is, to be removed. A rivet or a laminate, to the contrary, is meant to remain permanent, unremovable unless one is bent on breaking the permanent structure apart.”
The Federal Circuit first agreed that the intrinsic evidence called for “releasably attaching” to be construed per the district court’s definition. It agreed that the intrinsic evidence included not only the patent specification, but also the cited Meibock patent:
The district court properly considered other intrinsic evidence to aid its construction. For instance, the district court considered [the Meibock patent]. The Meibock patent is prior art that was listed as a reference on the face of the ‘466 patent and in an Information Disclosure Statement. This prior art reference to Meibock is not extrinsic evidence. This court has established that “prior art cited in a patent or cited in the prosecution history of the patent constitutes intrinsic evidence. … The Meibock patent explains that the toe and heel plates are “permanently attached … through the use of rivets or releasably attached through the use of fasteners such as screws or bolts.” … Thus, the district court correctly concluded: “[The] Meibock patent provides evidence that rivets are considered by persons of ordinary skill to be permanent fasteners.”
Finally, the Federal Circuit approved of the district court’s reference to its earlier uncontrolling decision addressing the removability of rivets, since the district court had merely used it to supports its independent conclusion in this case.
Marcus Thymian is a partner at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. Mr. Thymian is experienced in planning, creating, enforcing, and defending against patent portfolios, and has logged many miles on in-line skates over the past 20 years. [link to bio]
There are lots of great cases on the Federal Circuit's spring calendar. Several cases pending at either the Federal Circuit or Supreme Court that are 'worth a special look,' according to Hal Wegner. Here are some highlights of Mr. Wegner's list, with my own comments.
LabCorp v. Metabolite, petition for cert submitted, Supreme Court has requested Solicitor General's Opinion on Cert. The case involves a patentability question -- whether Metabolite's patented method of detecting vitamin B deficiency should be invalid as "because one cannot patent laws of nature, natural phenomena, and abstract ideas."
Purdue Pharma v. Endo, CAFC heard oral arguments in early November on the question of whether patentee's conduct was 'inequitable' for failing to disclose that results used to establish patentability were prophetic rather than experimental. A decision is expected soon.
SmithKline Beecham v. Apotex, awaiting decision on petition for rehearing. This case now revolves around the question of whether use of an invention to confirm utility for FDA approval is an 'experimental use' that saves a patent from anticipation under 102(b).
Phillips v. AWH, awaiting en banc decision on claim construction methodology.
Eolas Technologies v. Microsoft, Federal Circuit decision awaited, hopefully discussing the scope of 271(f). The upcoming appeal of AT&T v. Microsoft presents the same 'golden master disk' scenario as Eolas, and will become important if Eolas is decided on other grounds.
Independent Ink v. Illinois Tool Works, In January, the CAFC determined that, in an antitrust tying case, a patent presumptively defines the relevant market as the nationwide market for the patented product itself. There is some potential for cert in this case.
NTP, Inc. v. Research in Motion, Ltd., there is a good chance for a rehearing in this case involving RIM's BlackBerry product. This case will be important in defining extraterritorial application of U.S. patent laws in the modern era of networked computing systems.
In re Fisher is not yet on the CAFC calendar. In this case, the BPAI affirmed a rejection for lack of utility and enablement (101 and 112 p1) because the specification lacked a specific teaching of a substantial utility. According to the decision, without a specific teaching of substantial utility, then virtually all chemicals would meet the requirements of section 101 as at least "useful in research."
Although not patent litigation, Sarah Stirland (one of the few reporters focusing on intellectual property) at the National Journal has written a nice article regarding the potential for legislation in the 109th Congress.
Rates Technology v. Nortel Networks (Fed. Cir. 2005).
by Bradley Crawford
The defendant, Nortel, was sued for patent infringement but raised the affirmative defense of lack of personal jurisdiction. Later, the defendant filed a permissive counterclaim. The plaintiff subsequently asserted that Nortel waived its lack of personal jurisdiction defense when it filed its permissive counterclaim. The district court disagreed. It ruled that the defendant’s filing a permissive counterclaim did not waive the lack of personal jurisdiction defense. It also ruled that it lacked personal jurisdiction over the defendant and dismissed the case.
Medrad v. MRI Devices (Fed. Cir. 2005). 
