Gyory filed suit against Reebok for infringement damages on a patent that had expired in 1996. The district court dismissed for failure to state a claim. The Federal Circuit Affirmed:
Because "no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint," 35 U.S.C. § 286, and because an act must be performed "during the term of the patent" to constitute an act of infringement, 35 U.S.C. § 271(a), Györy cannot recover and his complaint was properly dismissed for failure to state a claim.
In what appears to be a generous gesture, the court declined to award attorneys fees to Reebok.
Notes:
Seasoned IP litigator Phil Mann, gives us his well reasoned take on the issue: "Mr. Gyory got very lucky on this one."
Mark Banner was nice enough to provide an MP3 encoded version of the Federal Circuit’s En Banc hearing in Phillips v AWH from February 8, 2005. You can listen to the streaming version or download the MP3.
Lisle owns the patent on a tie-rod tool for servicing a rack and pinion steering system. Lisle sued A.J. for infringement. Lisle won infringement on summary judgment and validity (no prior public use) in a jury verdict. A.J. appealed.
On the public use issue:
May 1989: Lisle had developed an early prototype of its device that would certainly be infringing;
Dec 1989: Lisle delivered the prototype (freely) to repair shops in Omaha without a formal confidentiality agreement;
June 1992: (30 months later) Lisle filed for a patent application.
Despite the fact that Lisle delivered the prototype well over a year prior to filing the application, the Federal Circuit upheld the jury’s findings that the repair shops use of the device was ‘experimental’ and thus did not create a patentability bar.
Palm Bay v. Veuve Clicquot Ponsardin (Fed. Cir. 2005)
By John Smith
Trademark applicant Palm Bay Imports appealed a decision sustaining an opposition (against its mark “Veuve Royale”) from the United States Trademark Trial and Appeal Board (TTAB). Palm Bay maintained that there was no likelihood of confusion with opposer Veuve Clicquot Ponsardin Maison Fondee en 1772’s marks “Veuve Clicquot Ponsardin,” “Veuve Clicquot,” and “The Widow.”
The Federal Circuit indicated that the term common to the marks in question, “veuve,” is distinctive, and that the same distinctive term, (especially when it appears as the first word) in both parties’ marks enhances the likelihood of confusion. Likewise, when a term common to two or more separate marks is generic or non-distinctive, there is less likelihood of confusion.
The Court also stated that evidence available only to a trade, such as a guide for distributors, does not show the extent to which consumers encounter a mark in the marketplace. Rather, such evidence only shows that the consuming public could potentially be aware of another use of a mark term. In the same vein, the Court maintained that the question of fame related to the class of consumers or potential consumers of the product, as opposed to the entire consuming public.
The Court found that the Board had made conflicting findings with respect to the mark “The Widow;” the Board had found that many Americans speak French and therefore would translate “veuve” into “widow,” (under the doctrine of foreign equivalents) but later also found that most Americans would not translate “veuve” into “widow.”
The Court affirmed the Board’s finding of a likelihood of confusion with respect to the marks “Veuve Clicquot Ponsardin” and “Veuve Clicquot,” but reversed the Board’s finding of a likelihood of confusion with respect to the mark “The Widow.” The refusal to register Palm Bay’s “Veuve Royale” mark was affirmed.
John Smith is an attorney at MBHB LLP in Chicago. He earned both his JD and PhD (inorganic chemistry) from Vanderbilt University. He has co-authored numerous articles and served as a faculty member in the Chemistry Department of Lipscomb University in Nashville, Tennessee.
NOTES:
For more info on the case and some nice pictures, see John Welch’s TTABlog.
Thatcher v. Khol’s Department Stores (Fed. Cir. 2005).
Thatcher sued Kohls and Associated Footware for infringement of Thatcher’s TEVA(R) sandals that were protected by a patent and by trade dress. The case settled, and the defendants agreed to stop making & selling the infringing sandals. Thatcher then sold his interest to Deckers Outdoor Corporation who sued Kohl’s again alleging that the department store had begun once again to sell copy-cat sandals. However, the district court dismissed the case, finding that Deckers lacked standing to enforce the 1997 consent judgment because the consent judgment did not extend Thatcher’s rights to successors-in-interest. Citing United States v. Armour & Co., 402 U.S. 673 (1971).
On appeal, the Federal Circuit applied the law of the regional circuit (7th circuit) to interpret the consent judgment. "The Seventh Circuit views a consent decree or a consent judgment as a form of contract, and, as such, the rules of contract interpretation apply. . . . There is nothing expressly set out in the consent judgment between Thatcher and Kohl’s extending Thatcher’s rights to any third party, including any "successor-in-interest." This silence is the functional equivalent of the parties’ express intent to exclude language of assignment."
The IP Law Bulletin provides great coverage of intellectual property issues and how those issues relate to the business world and the legal profession. (Unfortunately there is a subscription fee).
In today’s copy, they have a great summary article on Phillips v. AWH case and provide a transcript of the oral arguments. Luckily, I have a transcript too:
Download a copy of the Phillips v. AWH transcript [Phillips AWH Transcript.pdf]. I believe that this transcript originally came from Brad Wright at Banner who was at the hearing.
My Highlights from the transcript:
Dyk: If the claims are broader than the specification, doesn’t that create a problem?
Manthie [counsel for Phillips]: No, the specification is written to satisfy the written description, enablement, and best mode requirements, not to define the scope of the claims.
Bryson: So the specification can be limiting if there is a clear definition, but what about an implicit narrowing, as in Vitronics? Can the specification limit by implication?
A: No, that’s where the problem arises. Different people have different interpretations of the specification. Its like the famous Supreme Court case you know pornography when you see it. The devil is in the details of implicit . Judge Krieger said that baffle required both an angle limitat ion and an interlocking limitation. The prior panel decision in this case said that only the angle was required by the specification. Judge Dyk in dissent said the specification required neither limitation. There are just too many possibilities. Nothing in the claim mentions the function of deflecting bullets.
Clevenger: But we are looking at the process what is your posit ion on implicit narrowing based on the specificat ion? Should we require an explicit narrowing in order to narrow a claim term?
Fischer [Counsel for AWH]: Implicit narrowing is proper.
Clevenger: How can we tell if something has been implicitly narrowed?
A: If an element is described as essential to the invention, and there are no other examples given, then it is implicitly narrowed.
Clevenger: Should we rely on the purposes of the invention? Must it be unequivocally expressed? What if it s a multi-purpose patent?
A: [none]
Clevenger: Is it OK to rely on a dictionary? Is it error to use a regular dictionary if it s a technical term?
Whealan [U.S. government]: If you are dealing with sequencing, that word means something different in electronics and biotech.
Clevenger: Should we overrule our prior cases?
A: It should be clarified that the starting point is not the dictionary.
Dyk: The Supreme Court in statutory construction says to start with the dictionary?
A: But the dictionary doesn’t reflect one skilled in the art . The place to start is the specification.
Dyk: What if there is nothing explicit in the specification?
A: Yes, it’s OK to rely on implicit definit ions or meanings from the specification. The Novartis case not all terms were expressly defined. The next point is when does the specification narrow a claim term? Look at the Bard and Astrazeneca cases. A detailed analysis of the specification and prosecution history. In Brookhill, the same analysis was applied remote was not limited by the specification or prosecution history. So broader is fair. The Brookhill and Bard cases are instructive.
=======
As noted by a trusted court observer, the “transcript does not capture the visual image that trumps everything else!” A major highlight of the argument was the change in facial expression of many panel members when they heard appellant’s counsel (Manthie) point to chapter, line and verse of the patent document on his easel to support an alternate embodiment. It appeared that those panel members may have been pursuaded that the term ‘baffle’ should not have been limited, even when using the specification as guide. Bill Heinze connects the dots: “Could a clearly erroneous factual determination ultimately decide the whole case? Could a clearly erroneous factual determination ultimately decide the whole case?”
Today, the Federal Circuit held oral arguments in Phillips v. AWH. Over 250 people attended the arguments and over 30 briefs were filed in the appeal. It was expected that this case would weigh in heavily on policy issues concerning claim construction. Surprisingly, however, the court did not ask any questions regarding the use of prosecution history, prior art, or expert testimony for claim construction. Likewise, there was very little discussion of the use of competing dictionaries, such as the use of technical dictionaries versus general dictionaries.
However, the court did delve into the dictionary/specification dichotomy. A major concern that the court had was in the are of express versus implied limitations in the specification. Specifically, should claims be limited by a contextually implied definition of a term? Although not briefed by the parties, Judges Rader and Mayer were interested pursuing the idea of giving deference to district court decisions on claim construction.
In my point of view, this case is not about whether or not a dictionary is used prior to the specification. What matters here is giving a framework to district court judges so that their opinions will not be overruled so often. Others have made the argument, however, that even with a clear decision framework, the Federal Circuit will continue to reverse because the CAFC judges see themselves as often being in a better position to determine claim language — reasons: (i) the CAFC handles technology issues all the time and they are not going to close their eyes to areas of technology that they see everyday and (ii) the CAFC focuses on patent law, and thus should have less deference. Interestingly, although none of the briefs suggested it, the PTO’s solicitor John Whealan was asked about his position that patent examiners do not rely on dictionaries.
My Predicted Outcome: (but don’t rely on it).
The new rule will be: Even when the specification does not explicitly define a term, the court should interpret claims in the context of the specification and rely on dictionaries and other sources when the district court judge needs more clarity. Thus, dictionaries will receive a lower emphasis.
The CAFC is going to do the best it can to provide a framework for district court decisions, but I’m not convinced they will find a solution without broaching the issue of deference.
Even though everyone wants some deference given to lower courts on claim construction, this issue will not be decided in this opinion.
Claim construction is at issue in almost every patent infringement lawsuit. This case will likely change the structure of arguments over claim construction at the district court.
Olympia makes the Gorilla Bar, an embodiment of their patented pry-bar invention. Alltrade makes the Cobra Bar, "a slightly curved pry-bar with an hourglass-shaped shank.
Olympia sued for infringement and requested a preliminary injunction (PI). However, the California district court denied the PI because "Olympia had not shown a substantial likelihood that the Cobra Bar infringed . . . because Alltrade’s Cobra Bar did not have an elliptical cross section or a linear shank" as required by the claim language.
On appeal, Olympia asked the Federal Circuit to overturn the PI denial based on improper claim construction by the district court.
In its decision, the appellate panel first noted that before determining if there is a likelihood of infringement, a district court "must first construe the meaning of the relevant claims."
Although the appellate panel found errors in the district court’s construction, based on the district court’s proper analysis with respect one claim element, Olympia did not meet its burden of showing a likelihood of success on the merits of the infringement claim.
The decision of the district court is therefore affirmed, and Alltrade may legally continue to sell the Cobra Bar.
Comment:
It is difficult to get an appellate court to overturn a denial of a preliminary injunction on appeal. "[W]hen a preliminary injunction is denied, the movant carries a heavier burden to obtain a reversal." New England Braiding Co. v. A.W. Chesterton Co., 970 F.2d 878, 882 (Fed. Cir. 1992). The Federal Circuit’s standard of review for a denial of a PI is as follows:
This court reviews a denial of a preliminary injunction by the district court for abuse of discretion, which can be established by showing the district court decision is based on clearly erroneous factual findings, an error of law, or a clear error of judgment in weighing the relevant factors.
ISCO International v. Conductus and Superconductor Technologies (Fed. Cir. 2005) (Unpublished).
Background: ISCO sued Conductus for infringement of ISCO’s patent directed to a receiver front end for a cellular base station. The claims in question provide for the base station having cryogenically-cooled components. At trial, the jury sided with the defendants — finding that the patent was invalid, not infringed, and unenforceable for inequitable conduct. The Jury also found that ISCO had engaged in unfair competition — a verdict that was overturned on JMOL by the district court. ISCO appealed the remaining decision.
Holding: In contrast with its track record with bench trial appeals, the Federal Circuit is rather unlikely to overturn a jury verdict of invalidity. This case provides no exception. On appeal, the court was unable to find any grounds for reversal:
[O]ur review of the record under the substantial evidence standard accorded to the jury’s conclusions provides us with no grounds for disturbing the verdict.
In a non-precedential case, the Federal Circuit today refused to reconsider an earlier consent decree even though the patentee later filed a terminal disclaimer that cuts short the life of the patent.
In July 2000, after being sued for infringement, Chicago Brand agreed to a settlement with Mitutoyo. The consent decree signed by the district court found that Chicago Brand infringed the Mitutoyo’s patent, that Chicago Brand was enjoined from further infringement during the term of the patent, and that the patent expires on May 10, 2005. Later, Mitutoyo allegedly filed a terminal disclaimer in the parent case — making the patent only enforceable up to December 13, 2000.
Chicago Brand sued for a declaratory judgment that the patent had expired as a result of the terminal disclaimer. Both the district and appellate courts refused to reopen the consent decree — finding that "the principles of res judicata require that Chicago Brand now live with its earlier agreement in the Consent Judgment and Decree that the patent expires on May 10, 2005."
Field Hybrids sued Toyota for infringement of its hybrid engine patents. During prosecution, however, Field Hybrids had failed to respond to an office action and the case had gone abandoned. The case was eventially revived through a petition claiming "unintentional abandonment." Ultimately two patents issued based on the revived case.
Toyota moved for summary judgment of invalidity based on abandonment. Toyota’s argument rests on the argument that Field Hybrids "falsely claimed the delay in responding to the Office Action was unavoidable or unintentional." Toyota used letters from Field Hybrids’ attorneys warning of abandonment as proof that the delay was not unintentional.
The court agreed with the defendant Toyota. In addition, the court found that Field Hybrids’ "dawdling in attempting to revive the petitions" was "sufficient enough to warrant a finding" that the revival of the abandoned application should be overturned.
Notes:
Field Hybrids had waited to file the petition to revive until "the last day available" according to then applicable MPEP 711.03(c). [Not this has ben amended]. Then, after receiving a notice that the original petition was defective, Field Hybrids waited another six months to file a corrected petition.
Practice Issue — It appears that a major reason why Field Hybrids lost (this issue) was because their attorney wrote a CYA letter warning of the possibility of abandonment if Field Hybrids did not respond to the OA. Is it right to put that type of letter on file even if it will eventually hurt the client?
When there is a dissent, I read it first. Dissents get to the point quickly and rarely mince words. They are often fun to read and relatively short. Judge RADER’s dissent in Merck v. Teva fits these attributes quite well. Rader made two specific points: (i) that the majority erred in its analysis of the lexicographer doctrine and (ii) that the majority should have given some deference to the lower court’s decision.
(i) Can a Patentee Be His Own Lexicographer Anymore?
Rader disagreed sharply with the majority’s finding that the word "about" had not been defined in the specification. In the specification, the patentee noted that nomenclature in the area was unclear and outlined an example meaning of "about 70 mg of [the drug.]":
Because of the mixed nomenclature currently in use by those o[f] ordinary skill in the art, reference to a specific weight or percentage of a bisphosphonate compound in the present invention is on an acid active weight basis, unless otherwise indicated herein. For example, the phrase "about 70 mg of a bone resorption inhibiting bisphosphonate selected from the group consisting of alendronate, pharmaceutically acceptable salts thereof, and mixtures thereof, on an alendronic acid active weight basis" means that the amount of the bisphosphonate compound selected is calculated based on 70 mg of alendronic acid.
According to RADER, this passage is a classic example of the patentee’s attempt to invoke the lexicographer doctrine. Specifically, the patentee defined the phrase by stating that "the phrase ‘about 70 mg of [the drug]’ means …" And, to underscore the definition, the patentee gave a reason for calling out the definition, "mixed nomenclature currently in use."
Therefore, even a casual reader, let alone one with skill in this art, would immediately recognize that the patentee intended to avoid any ambiguity inherent in "mixed nomenclature" by explicitly defining the entire phrase.
(ii) Deference – Truth in Advertising
According to Judge Rader, the court "often hears criticism from district court judges that its reversal rate on claim construction issues far exceeds that of other circuit courts. . . . In response, nearly every judge on this court has publicly professed to accord some level of deference to district courts regardless of this court’s de novo."
In Rader’s view, after this case profession of deference is "rather hollow."
This is the classic "close case," so close in fact that ultimately two federal judges and the USPTO agreed with Merck, and two federal judges agreed with Teva Pharmaceuticals. The District Court tried this case from March 4 – 7, 2003, then issued a 75-page opinion analyzing the claims and arguments in consummate and accurate detail. This [appellate] court received the typical briefs from the parties, an appendix containing selected portions of the record, and heard a total of approximately thirty minutes of argument by the parties on the issues before this court. Despite the district court’s superior tools and time to evaluate the complete record, to hear and inquire from expert and fact witnesses, to delve into countless related details, to probe the scientific and semantic context, and to entertain argument as long as necessary for clarity, this court with its reading three briefs before its half-hour hearing becomes enamored with its own analysis of a very close issue and reverses the district court.
Response:
Professor Polk Wagner, for one, believes that "Rader is absolutely dead wrong on this argument."
The majority does exactly what it should do: any fair reading of the specification does not clearly convey to a PHOSITA an intent to use the term "about 70mg" to mean "exactly 70mg" [as found by the district court]; at best, the language is unclear and ambiguous.
Further, Rader’s suggestion that this case means that patentees shouldn’t use the lexicographer option is specious: the message of this case is that the court isn’t going to infer a definitional statement where one doesn’t exist, and — more importantly — that attorneys can’t dress up the tired old arguments about how the specification limits the claims by inference in the guise of lexicography. Rader’s approach would take us exactly the wrong direction: towards patent claims that have no meaning whatsoever until several years of litigation proceed, and no finality until a Federal Circuit panel divines a so-called ‘contextual’ meaning that varies according to the idiosyncratic senses of the judges involved.
Kudos to Gajarsa for getting this one right. Let’s hope the majority in Phillips similarly holds back the tides of hysteria over clarifying the rules.
Merck has FDA approval to market a once-weekly dose of alendronate monosodium trihydrate, which it does under the trade name Fosamax. In 2000, TEVA amended an existing ANDA, and sought FDA approval to market a generic version of Fosamax. Merck sued, alleging infringement of Merck’s patented "Method for Inhibiting Bone Resorption."
After construing the claims, the district court found the patent valid (not invalid) and delayed the effective date of the FDA approval of Teva’s ANDA until the patent expires.
Teva appealed the court’s claim construction and non-obviousness findings. On appeal, the Federal Circuit Reversed.
Claim Construction:
In a Markman proceeding, the district court determined that the claim term ‘about’ had been specifically defined by the patentee — and thus given a special meaning. The Federal Circuit disagreed, finding that ‘about’ had not been clearly redefined in the specification.
Because the patentee did not clearly redefine "about" in the specification, and because the district court construed the claim term in a manner inconsistent with the specification, we reverse the district court’s claim construction. We thus hold that the term "about" should be given its ordinary and accepted meaning of "approximately."
Validity:
Next, the appeals court vacated the district court’s determination that the invention was not obvious. The court went on to specifically find claims 23 and 37 invalid as obvious and not infringed.
A. Graham Factors
Amongst the several errors explained by the appellate court, an interesting error came from the district court’s weighing of secondary considerations of non-obviousness.
Although the district court correctly found Merck’s once-weekly dosing of Fosamax was commercially successful, in this context that fact has minimal probative value on the issue of obviousness. . . . Financial success is not significantly probative of that question in this case because others were legally barred from commercially testing the [] ideas.
According to the CAFC panel, commercial success is not probative on obviousness if others are barred from commercially testing the patented ideas. Couldn’t this same theory be applied in other non-drug cases?
B. Weight Given To Prior Art
In its decision, the district court discounted one piece of prior art that had been published in the Lunar News because the article was not published in a peer-reviewed journal or authored by one skilled in the art. The federal circuit diagreed again —
The Lunar News Article had clearly suggested the once-weekly dosing . . . to avoid or minimize problems related to dosing frequency. And as shown above, the district court itself found this particular set of problems were of greatest concern in the art. Indeed, to the extent the district court finds Merck’s weekly-dosing idea non-obvious because it went against prevailing wisdom, the court must still explain why Merck and not Dr. Mazess should get credit for the idea. Because Merck’s idea added nothing to what came before, the district court’s answer comes down to nothing more than the credentials of the authors. In this case that difference is not enough to avoid invalidating the claims.
The district court’s judgment of infringement was therefore REVERSED.
DISSENT:
In a scathing dissent, Judge Rader made several conclusions based on the majority opinion, including:
Patentees should elect the lexicographer option at their own risk — it is paid only lip-service by the court.
In this case, this court eschews all deference, a particularly striking choice in the face of a very close case and a district court whose diligent and intelligent process and resolution earned more respect than it received. . . . [T]his case . . . certainly makes any protestations of deference in fact sound rather hollow.
This dissent is likely indicative of the approach Rader will take in the Phillips v. AWH rehearing.
Silicon Image v. Genesis Microchip (Fed. Cir. 2005).
Silicon sued Genesis for infringement of its patents on video display technology. After a Markman hearing, the parties represented to the district court that they had reached an agreement to settle the action.
The district court then entered an order, enforcing the agreement and ordering Silicon to certify that it had received a royalty payment as a precondition to the dismissal of the infringement action.
Genesis disagreed with the district court’s interpretation of the agreement and appealed.
On appeal, however, the Federal Circuit determined that the court order, despite being so titled, was not a final judgment. Thus, the appellate court lacked jurisdiction to hear the appeal.
The final judgment rule cannot be satisfied by stipulation of the parties. Regardless of whether a case is resolved by being fully adjudicated on its merits or by a settlement between the parties, the final judgment rule remains a precursor to an appeal as of right before this court. . . In order to satisfy this requirement, the trial court must dismiss, with or without prejudice, all of the claims as a predicate to a final judgment before appellate jurisdiction may lie to challenge any matter relating to the settlement. . . .
Genesis’s payment and Silicon’s stipulation to the court that it had received such payment are conditions precedent to dismissal of the underlying infringement claims. The conditions precedent were never satisfied. As a result, the underlying claims were never dismissed.
Mars filed a patent infringement suit against Del Monte, alleging infringement on its patented pet food. (U.S. Patent 6,312,746)(A dual texture animal food product with a soft inner component surrounded by a harder, more rigid shell). After a Markman hearing, the district court issued summary judgment of noninfringement to Del Monte. On appeal, the Federal Circuit reversed. In the Mars appellate decision, the appellate court modified the claim construction and remanded.
Now, based on the new claim construction, the California district court has decided the case in favor of Mars. The trial moves to a damages phase next month. According to Teresa F. Lindeman at the Pittsburgh Post-Gazette,
A jury trial has been ordered next month to determine whether Mars will get $2.3 million in compensatory damages, plus additional damages for willful infringement and a permanent injunction to stop Del Monte from making the so-called dual-textured products.
Mars’s affected products include Pounce Purr-fections and Meaty Bones Savory Bites. An appeal is expected.
Independent Ink v. Illinois Tool Works (Fed. Cir. 2005).
by Deana Larkin
Trident, a wholly-owned subsidiary of Illinois Tool Works, is a manufacturer of printheads and owns U.S. Patent No. 5,343,226 covering the technology.The ‘226 patent discloses an ink jet device and a supply system with a hand actuated peristaltic pump.Trident also manufactures ink for use with the patented printheads.Although the ink is not protected by any of Trident’s patents, their standard license agreements grant the right to “manufacture, use and sell… ink jet printing devices…” to other printer manufacturers only “when used in combination with ink and ink supply systems supplied by Trident.”
Independent Ink also manufactures ink useable in Trident’s patented printheads.Independent filed suit in the Central District of California against Trident and Illinois Tool Works alleging, among other things, an illegal tying arrangement in violation of section 1 of the Sherman Act. The district court, however, dismissed the case on summary judgment.
On appeal, the Federal Circuit reverses and remands the district court’s grant of summary judgment in favor of Trident on the tying claim.
According to the Appellate Court, Trident’s licenses are “explicit tying agreement[s]” because the sale of a patented product is conditioned on the sale of an unpatented one. Although the district court required affirmative proof of market power from the plaintiff, the Federal Circuit reiterated that the Supreme Court has clearly established a presumption of market power unique to patent and copyright tying cases, it holds that this presumption is rebuttable.
“Once the plaintiff establishes a patent tying agreement, it is the defendant’s burden to rebut the presumption of market power and consequent illegality that arises from patent tying.”
Rebuttal evidence requires expert testimony or “credible economic evidence of the cross-elasticity of demand, the area of effective competition, or other evidence of lack of market power.”
Furthermore, the Court admonishes the district court for not following clearly established Supreme Court precedent and for dismissing the High Court’s holdings as “vintage.”Commenting that it may be time to abandon the doctrine, a significant portion of the opinion emphasizes that it is up to the Supreme Court or Congress to expressly overrule its own precedent — this prerogative does not lie with the district courts.
Note: Deana Larkin is an attorney at the law firm McDonnell Boehnen Hulbert & Berghoff LLP in Chicago with a background in biotechnology. Ms. Larkin received a PhD in biochemistry from the University of Houston where her research concerned RNA-Protein interactions. [Brief Bio]
Commissariat a L’Energie Atomique (CEA) v. Chi Mei OptoElectronics (CMO) (Fed. Cir. 2005).
Plaintiff CEA is a French governmental agency that develops new technologies for sale and license to the private sector for commercial use. One such technology is their design for liquid crystal display (LCD) technology used for flat panel monitors.
Defendant CMO is a Taiwanese company and is one of the largest manufacturers of LCD monitors in the world. CMO serves as an original equipment manufacturer (OEM) for Dell and other companies.
Early on in the litigation, the Delaware district court dismissed CEA’s suit for lack of personal jurisdiction over CMO. On appeal, the Federal Circuit vacated the dismissal.
Specifically, the appellate panel found that the trial court had erred in denying CEA’s request for discovery on the issue of personal jurisdiction. According to the Court, CEA had established at least a prima facie case that the court had personal jurisdiction over the Defendant — and thus should be entitled to further discovery.
Indeed, CEA has gone beyond factual allegations, and has already made a prima facie case for CMO’s use of an established distribution network that likely results in substantial sales of its products in Delaware. As we have discussed, this showing likely satisfies the standard set forth by Justice Brennan in Asahi, of the "regular and anticipated flow of products from manufacture to distribution to retail sale." However, CEA is entitled to jurisdictional discovery to determine whether it can satisfy Justice O’Connor’s more restrictive version of the stream of commerce theory.
VACATED AND REMANDED
NOTE: This is the second case in a row where the Federal Circuit has reversed findings of no personal jurisdiction. The last case was Pedre Promotional.
Teva Pharmaceuticals v. Pfizer (Fed. Cir. January 21, 2005).
Pfizer holds two patents relating to Zoloft®. Teva is a manufacturer of generic drugs and filed an Abbreviated New Drug Application (ANDA), seeking approval from the FDA to market a generic version of sertraline hydrochloride (Zoloft®).
Under the provisions of the Hatch-Waxman Act, Pfizer had 45-days to sue Teva for patent infringement based on Teva’s ANDA filings. However, Pfizer did not sue. Teva then brought a declaratory judgment action against Pfizer, seeking a determination that its generic drug did not infringe Pfizer’s patent.
The district court (D.Mass.) dismissed Teva’s suit for lack of jurisdiction for failing to establish an actual controversy under the Declaratory Judgment Act.
The district court applied the two-part test formulated by this court to determine whether an actual controversy exists in a patent infringement suit. Under that test, there must be both (1) an explicit threat or other action by the patentee which creates a reasonable apprehension on the part of the declaratory judgment plaintiff that it will face an infringement suit, and (2) present activity by the declaratory judgment plaintiff which could constitute infringement, or concrete steps taken by the declaratory judgment plaintiff with the intent to conduct such activity. See Amana Refrigeration, Inc v. Quadlux, Inc., 172 F.3d 852, 855 (Fed. Cir. 1999). The district court determined that Teva had satisfied the second prong of the test by filing its ANDA for generic sertraline hydrochloride. However, the court concluded that Teva had failed to satisfy the “reasonable apprehension” prong of the test.
On appeal, Teva argued that the district court erred when it determined that Pfizer had not created a reasonable apprehension that it would bring suit against Teva for infringement of the patent. In its apprehension argument, Teva primarily relied on the facts that Pfizer placed the patent in the Orange Book. However, the Federal Circuit determined that “Teva’s reliance on Pfizer’s listing of the ’699 patent in the Orange Book is misplaced.“
The listing of a patent in the Orange Book by an NDA filer is the result of a statutory requirement. Without more, Pfizer’s compliance with the Hatch-Waxman listing requirement should not be construed as a blanket threat to potential infringers as far as Pfizer’s patent enforcement intentions are concerned. . . . More is required for an actual controversy than the existence of an adversely held patent. . . . We are not prepared to hold that listing a patent in the Orange Book evinces an intent to sue any ANDA filer who submits a paragraph IV certification with respect to the patent.
Dismissal Affirmed.
In a spirited dissent, Judge Mayer argued that the filing of an NDA application combined with listing of the patents in the Orange Book does give rise to a reasonable apprehension that an Abbreviated New Drug Application (ANDA) filer and declaratory judgment plaintiff will face a patent infringement suit.
The Chicago Tribune has reported on a patent infringement action by an individual inventor, Frank Weyer, against Ford Motor Company. In the suit, Weyer accuses Ford of infringing his patent that covers a "user selectable multi-color automobile instrument panel illumination." (Patent No. 5,975,728).
Ford’s new 2005 Mustang includes a MyColor feature that reportedly infringes.
Weyer says he has spoken to Ford’s attorneys about this. "I told them that all that I was seeking was a very reasonable royalty for their use of the patent," he says. "All that Ford has done so far is ask for more time to answer the complaint."
Of note, in addition to being an inventor, Weyer is a patent attorney with an office in Beverly Hills, California. In an earlier lawsuit, Weyer sued Network Solutions and Register.com for violating their patent on the selection of an e-mail address based on a domain name. www.whois.sc/news/2004-01/registrars-sued.html. He also spent time working for the Peace Corps.
I hope that the case ends quickly because I really like the new Mustang!
