Tag Archives: Federal Circuit En Banc

Willful Patent Infringement: en banc appeal

July 13, 2004Articles and Publications, PatentFederal Circuit En BancDennis Crouch

UPDATE: On September 13, the Federal Circuit issued its opinion, read the full case review here: Knorr-Bremse v. Dana .

Original: The Federal Circuit recently heard en banc oral arguments in the willful patent infringement appeal Knorr-Bremse v. Dana Corporation. John Marshall Professor Janice Mueller’s new article discusses this case and the dilemmas faced by litigants hoping to defend against willfulness charges by disclosing privileged advice of counsel.

Subject to virtually unanimous condemnation is the Federal Circuit’s “adverse inference” rule, which forces a party accused of willful infringement to choose between two unpalatable options: (i) disclosing privileged advice of counsel to mount a willfulness defense, or (ii) not disclosing such information and being subjected to an adverse inference that an exculpatory opinion was not or could not be obtained.

The appellate decision is expected this quarter.

“Willful Infringement and the Federal Circuit’s Pending En Banc Decision in Knorr-Bremse v. Dana Corp.,” 3 J. Marshall Rev. Intellectual Prop. L. 218 (Spring 2004), available at http://www.jmls.edu/ripl/vol3/issue2/mueller.pdf.

Honeywell v. Hamilton Sundstrand

June 2, 2004Patent, Patent Cases 2004Federal Circuit En BancDennis Crouch

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).

Phillips v. AWH Corp.

April 8, 2004Patent, Patent Cases 2004Federal Circuit En BancDennis Crouch

Phillips v. AWH Corp. (Fed. Cir. 2004)

In a case involving modular wall panels for prisons (U.S. Patent 4,677,798), the Federal Circuit interpreted the term “baffles” to structures oriented at angles other than 90 degrees. Although the ordinary meaning of the term (“something for deflecting, checking, or otherwise regulating flow”) includes 90 degree orientations, the Court listed two reasons for abandoning the ordinary meaning. First, the only embodiment shows “baffles angled at other than 90 degrees.” Next, the Court found that baffles angled at other than 90 degrees better realize the invention’s purpose of providing impact or projectile resistance.

In dissent, Judge Dyk argued that 1) a patent describing only a single embodiment is limited to that embodiment, and 2) impact or projectile resistance was not the only objective listed in the patent and claims are not required to be capable of achieving all of the objectives of an invention.

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NOTE: This case is scheduled for a rehearing en banc and will likely create dramatic changes to patent litigation procedures, just as Markman has done. Read more here.