In This Issue
· Federal
Circuit Affirms Grants Of Summary Judgment
· Federal Circuit Remands Case For
Willfulness Determination
· Federal Circuit Affirms Summary Judgment Of
No Contributory Infringement But Vacates Summary Judgment Of No Induced
Infringement
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Federal Circuit Affirms Grants Of
Summary Judgment
In WM. Wrigley Jr. Co. v.
Cadbury Adams USA LLC (Appeal Nos. 2011-1140, 1150), the Federal Circuit
affirmed the district court’s grant of cross-motions for summary judgment.
WM Wrigley Jr. Co and Cadbury
Adams USA LLC compete in the chewing gum market. Wrigley owns U.S. Patent No.
6,627,233 (the ‘233 patent) which claims a chewing gum that combines menthol
with WS-23, a cooling agent. Cadbury owns U.S. Patent No. 5,009,893 (the ‘893
patent), which claims a chewing gum that combines menthol with WS-3, another
type of cooling agent. After Wrigley
introduced its WS-23/menthol chewing gum, Cadbury reformulated some of its
chewing gum products to include WS-23. Wrigley sued Cadbury for infringement
of the ‘233 patent. Cadbury counterclaimed accusing Wrigley of infringing the
‘893 patent.
Both parties moved for summary
judgment. Cadbury’s motion sought to have the asserted claim of the ‘893
patent declared invalid on the grounds of anticipation and obviousness; while
Wrigley’s motion sought a finding of non-infringement of the patent.
The district court granted Wrigley’s
motion for summary judgment of non-infringement refusing to apply the
doctrine of equivalents as urged by Cadbury. That finding was later confirmed
by the Federal Circuit.
With respect to Cadbury’s invalidity
motion, the Court found that a prior art reference, Shahidi, disclosed a
number of different combinations of cooling and flavoring elements, including
a combination of menthol, which was identified as one of the “most suitable”
flavoring agents, with WS-23, which the reference identified along with WS-3
as among a group of three “particularly preferred cooling agents.” Based on
the disclosure of the combination of those components, the Federal Circuit
affirmed the district court’s holding of invalidity for anticipation.
Additionally, the Federal
Circuit stated that there was a strong case of obviousness based on the prior
art references of record. The prior art reference Luo taught the
physiological cooling effect from combining menthol with WS-3, and the prior
art reference Parrish showed that WS-3 and WS-23 were the two most attractive
cooling agents for commercial use from among 1,200 cooling agents tested. Further,
Shahidi taught the combination of menthol and cooling agents, of which WS-3
and WS-23 were two of the three most preferred candidates. The Federal Circuit held that a person of
ordinary skill in the art would find it “obvious to try” the claimed
combination, and affirmed the district court’s conclusion that, even in light
of the evidence of secondary considerations, the asserted claim would have
been obvious in light of Luo and Parrish.
With respect
to Wrigley’s non-infringement motion, the issue was whether there was
infringement under the doctrine of equivalents. The Federal Circuit considered the
prosecution history of the ‘893 patent, and held that the inventors were on
notice of the potential interchangeability of WS-23 and WS-3, yet they
drafted the claims of the patent narrowly to recite certain
N-substituted-p-menthane carboxamides, not a broader category of carboxamides
that would include WS-23. Thus, the Federal Circuit affirmed that Cadbury
could not expand the coverage of its ‘893 patent to include WS-23 through the
doctrine of equivalents, and the summary judgment of non-infringement was
affirmed.
Judge Newman filed a dissent.
Federal Circuit Remands Case For Willfulness Determination
In Bard Peripheral v. W.L. Gore, (Appeal No. 2010-1510), the Federal
Circuit remanded the issue of willfulness for the district court.
The Federal Circuit stated that
in In re Seagate Technology, LLC, a
two-pronged test was established for proving willful infringement. To establish willful infringement, “a
patentee must show by clear and convincing evidence that the infringer acted
despite an objectively high likelihood that its actions constituted infringement
of a valid patent.” Once the
“threshold objective standard is satisfied, the patentee must also
demonstrate that this objectively-defined risk . . . was either known or so
obvious that it should have been known to the accused infringer.” The Federal Circuit stated further that the
threshold determination of objective recklessness entails an objective
assessment of potential defenses based on the risk presented by the asserted patent.
The Federal Circuit reasoned that the
objective determination of recklessness, even though predicated on underlying
mixed questions of law and fact, is best decided by the judge as a question
of law subject to de novo review.
The Federal Circuit concluded
that the district court had failed to address the objective prong of
willfulness as a separate legal test from Seagate’s subjective component. Gore had asserted several defenses that it says were
“reasonable”: inventorship, inadequate written description, obviousness, and
anticipation. Accordingly, the Federal Circuit remanded the case to determine,
“based on the record ultimately made in the infringement proceedings,”
whether a “reasonable litigant could realistically expect” those defenses to
succeed.
Federal Circuit Affirms Summary
Judgment Of No Contributory Infringement But Vacates Summary Judgment Of No
Induced Infringement
In Toshiba Corporation v. Imation Corp. et al. (Appeal No. 2011-1204) the Federal Circuit affirmed the district
court’s grant of summary judgment of no contributory infringement, but
vacated the grant of summary judgment of no induced infringement.
On the issue of contributory
infringement, the Federal Circuit found that Toshiba had the burden of proof,
but failed to introduce evidence sufficient to create a genuine issue of
material fact as to whether using unfinalized DVDs was not a substantial
non-infringing use. Therefore, the Federal Circuit affirmed the district
court’s grant of summary judgment of no contributory infringement.
On the issue of induced
infringement, the Federal Circuit stated that there was ample evidence
showing that Appellees had designed their DVDs to comply with the DVD
standards, instructed users to use them in an infringing manner, and some
recommended against using the DVDs in a non-infringing manner. Appellees also
advertised their DVDs as compliant with industry standards. Such evidence was sufficient to create a
triable issue of fact of whether the Appellees had induced infringement, such
that the grant of summary judgment on the issue was improper. Accordingly, the Federal Circuit vacated
the summary judgment of no induced infringement and remanded the case.
Judge Dyk concurred in part and
dissented in part. |
