Greenblum & Bernstein, P.L.C.
Recent Litigation News in Intellectual Property
In This Issue
· Federal Circuit Affirms Grant Of Summary Judgment Of Invalidity And Non-infringement
· Federal Circuit Reverses Summary Judgment Of Laches
· Federal Circuit Reverses District Court’s Grant Of JMOL Of Invalidity For Obviousness
· Federal Circuit Holds No Case Or Controversy Over Unasserted Claims
· Federal Circuit Holds Res Judicata Bars Defenses
· Federal Circuit Remands Cases For Determination Of Appropriate Rule 11 Sanctions
In Voter Verified, Inc. v. Premier Election Solutions, Inc. (Appeal Nos. 2011-1553, 2012-1017), the Federal Circuit affirmed the district court’s grant of summary judgment of invalidity and non-infringement.
The patent-in-suit (the ‘449 Patent) relates to automated systems and methods for voting in an election, featuring a self-verification procedure by which “machine and human error may be detected and corrected before the ballot is submitted by the voter for tabulation.” The voter votes using an electronic voting station, which temporarily records the voter’s input and generates a printed ballot. The voter then checks the ballot for accuracy. The voter has to accept the ballot for it to be recorded.
The district court held the claims invalid for obviousness based upon a web-based article authored by Benson. Voter Verified argued that an article must be “searchable by pertinent terms over the internet” to qualify as a prior art “printed publication” and that the defendants “provided no evidence of any indexing on any database” that would have allowed the interested public to locate the website, much less the Benson article contained therein.
The Federal Circuit held that the Benson article was a “printed publication” within the meaning of § 102(b), and that the article renders the claim obvious. The Federal Circuit stated that when considering whether a given reference qualifies as a prior art “printed publication,” the key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. Additionally, whether a reference is publicly accessible is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to members of the public. The Federal Circuit noted that public accessibility is a legal conclusion based on underlying factual determinations, and that indexing is a relevant factor in determining accessibility of potential prior art, particularly library-based references, but indexing is not a necessary condition for a reference to be publicly accessible. Rather, it is but one among many factors that may bear on public accessibility. The ultimate question is whether the reference was available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it. Thus, while often relevant, evidence of indexing is not an absolute prerequisite to establishing online references as printed publications within the prior art.
The Federal Circuit also affirmed the district court’s summary judgment of non-infringement. Voter Verified that the ‘449 patent sets forth the voter as an “alternative and equivalent” structure for carrying out the claimed ballot scanning function. The Federal Circuit rejected this argument, stating that it is well established that “a human being cannot constitute a ‘means’” within the scope of § 112, ¶ 6.”
Accordingly, the Federal Circuit affirmed the grant of summary judgment.
Federal Circuit Reverses Summary Judgment Of Laches
In Hor and Meng v Chu (Appeal Nos. 2011-1540), the Federal Circuit reversed the district court’s grant of summary judgment that inventors were barred by laches to correct inventorship under 35 U.S.C. § 256.
Hor and Meng claimed that they were joint inventors with Chu of the ‘866 and ‘418 patents, on which Chu is listed as the sole inventor. Hor and Meng worked with Chu in a lab performing research related to high temperature superconducting compositions, the subject matter of the patents. The ‘866 patent application was filed on March 26, 1987, and the patent issued on June 6, 2006. The ‘418 patent application was filed on January 23, 1989, and the patent issued on May 4, 2010.
In December 2008, Hor filed a complaint against Chu, asserting a claim for correction of inventorship of the ’866 patent under 35 U.S.C. § 256. In March 2010, the district court granted Meng’s motion to intervene to assert her own § 256 claim against Chu. In June 2010, shortly after the ’418 patent issued, Hor and Meng filed motions for leave to amend their complaints to add a § 256 inventorship claim with respect to the ’418 patent, which the district court granted.
Chu moved for summary judgment that Hor’s and Meng’s inventorship claims were barred by laches because Hor and Meng knew or should have known by as early as 1987 that they were not named as inventors on the patent applications that ultimately issued as the ’866 and ’418 patents. The district court agreed that laches barred the inventorship claims. According to the district court, Hor’s and Meng’s inventorship claims arose before the patents issued, and they knew or should have known of their claims by the early 1990s at the latest. Because Hor did not file suit until 2008 and Meng did not intervene until 2010, the court concluded that a presumption of laches attached to their claims and that neither Hor nor Meng had sufficiently rebutted that presumption.
On appeal, the Federal Circuit reversed the grant of summary judgment, holding that the laches period for a § 256 correction of inventorship claim begins to run when “the omitted inventor knew or should have known of the issuance of the patent,” regardless of whether the omitted inventor knew or should have known of the omitted inventorship while the patent application was pending before the PTO. Since Hor and Meng filed their claims within six years of the issuance of the ’866 and ’418 patents, the district court had legally erred in finding that a presumption of laches attached to these claims.
Federal Circuit Reverses District Court’s Grant Of JMOL Of Invalidity For Obviousness
In Transocean v. Maersk (Appeal No. 2011-1555), the Federal Circuit reversed the district court’s grant of JMOL that the patents-in-suit were invalid for obviousness.
In an earlier related decision, Transocean I, the Federal Circuit had held that the prior art references teach every limitation of the asserted claims and presented “a prima facie case of obviousness.” The Federal Circuit noted, however, that the establishment of a prima facie case is not a conclusion on the ultimate issue of obviousness, and that evidence of “secondary considerations” must always when
present be considered en route to a determination of obviousness.
On remand from Transocean I, the jury made express findings on seven types of objective evidence of nonobviousness, i.e., commercial success, industry praise, unexpected results, copying, industry skepticism, licensing, and long-felt but unsolved need. The jury found that each of these considerations supported the nonobviousness of Transocean’s claims. In granting Maersk’s motion for JMOL of obviousness, however, the district court concluded that the record evidence failed to support these findings. The Federal Circuit disagreed, holding that Transocean had presented substantial evidence from which a reasonable jury could find that each of the seven objective factors supports the nonobviousness of Transocean’s claims.
The Federal Circuit stated that few cases presented such extensive objective evidence of nonobviousness, and that the Federal Circuit had rarely held that objective evidence is sufficient to overcome a prima facie case of obviousness. However, the Federal Circuit stated that this was precisely the sort of case where the objective evidence established that an invention appearing to have been obvious in light of the prior art was not. The jury had found that seven distinct objective factors support nonobviousness and, the Federal Circuit found all these findings were supported by substantial evidence. Weighing this objective evidence along with all the other evidence relevant to obviousness, the Federal Circuit concluded that Maersk failed to prove by clear and convincing evidence that the asserted claims would have been obvious. Accordingly, the district court’s grant of JMOL of obviousness was reversed.
Federal Circuit Holds No Case Or Controversy Over Unasserted Claims
In Fox Group, Inc. v. Cree, Inc. (Appeal No. 2011-1576), the Federal Circuit vacated the district court’s decision that the entire patent-in-suit, including unasserted claims, was invalid.
Cree had sought summary judgment of invalidity with respect to all claims of the patents-in-suit. Upon a finding that claims 1 and 19 of the patent-in-suit were invalid under § 102(g), the district court granted Cree’s summary judgment motion on its counterclaim seeking a declaration that the entire patent was invalid.
The Federal Circuit stated that in patent cases, the existence of a case or controversy must be evaluated on a claim-by-claim basis. Jurisdiction must exist at all stages of review, not merely at the time the complaint was filed. A counterclaimant must show a continuing case or controversy with respect to withdrawn or otherwise unasserted claims.
Fox’s Complaint alleged infringement of “one or more claims,” but Fox subsequently narrowed the scope of its asserted claims before the district court had ruled on the parties’ summary judgment motions. The Federal Circuit affirmed the district court’s finding that only claims 1 and 19 of the patent were asserted. The Federal Circuit stated that both parties were on notice that only claims 1 and 19 were at issue, and they knew which claims were at issue before the district court ruled on the parties’ summary judgment motions. Thus, there was no case or controversy with respect to the unasserted claims at the time of the summary judgment motions and the district court did not have jurisdiction over the unasserted claims. Accordingly, the Federal Circuit vacated the district court’s declaration that the entire patent was invalid.
Federal Circuit Holds Res Judicata Bars Defenses
In Cummins, Inc. v. TAS Distribting Co., Inc. (Appeal No. 2010-1134), the Federal Circuit affirmed the district court’s grant of summary judgment which found that Cummins’ declaratory judgment suit against TAS was barred by the doctrine of res judicata in light of an earlier litigation.
In February 2003, TAS filed a declaratory judgment action in the U.S. District Court for the Central District of Illinois (TAS I), alleging that Cummins had breached a Master License Agreement by failing to make all reasonable efforts to market and sell the TAS technology. TAS prevailed with the district court ruling that Cummins had a continuing contractual obligation extending beyond March 31, 2003 to make the per-unit royalty payments for ongoing sales.
On May 31, 2007, TAS filed a second suit in Illinois (TAS II). In TAS II, TAS claimed that Cummins breached the Master License Agreement by failing to pay
royalties on all of Cummins’ products that incorporated TAS technology. Cummins sought leave to amend its Answer to include patent-based affirmative defenses and counterclaims related to the prior sales of the TAS technology. The district court prevented Cummins from pursuing those claims on the grounds that such claims were barred by res judicata and that the claims should have and could have been brought in TAS I.
On March 18, 2009, Cummins initiated TAS III in which Cummins sought to have the trial court: (1) dismiss TAS’ suit in TAS II; (2) declare TAS’ patents invalid under 35 U.S.C. §§ 102 and 103; (3) declare the Master License Agreement void for patent misuse; (4) declare that TAS engaged in patent misuse for improperly enforcing the TAS patents; (5) declare TAS’ patents unenforceable due to inequitable conduct; and (6) rescind the Master License Agreement in its entirety. TAS filed a motion for summary judgment seeking to bar all of Cummins’ claims for declaratory relief on the basis of the doctrine of res judicata, which was granted by the district court.
On appeal, the Federal Circuit stated that res judicata, also known as “claim preclusion,” operates in Illinois to prevent a party from bringing suit to resolve claims that were or could have been decided in a prior action. Three conditions must pertain before Illinois state courts will bar a later suit based on res judicata: (1) a court of competent jurisdiction must have rendered a final judgment on the merits in an earlier suit; (2) the earlier and later suits must involve the same causes of action; and, (3) the two suits must involve the same parties or their privies. The doctrine of res judicata “extends to what was actually decided in the first action, as well as those matters that could have been decided in that suit. Illinois courts have consistently held that the bar of res judicata extends not only to questions actually decided, but also to all defenses and counterclaims, which might have been presented in the prior litigation.
The Federal Circuit agreed with the district court that res judicata was applicable and affirmed the district court’s grant of summary judgment.
Federal Circuit Remands Cases For Determination Of Appropriate Rule 11 Sanctions
In Raylon, LLC v. Complus Data Innovations, In.c et al.(Appeal Nos. 2011-1355, -1356, -1357, -1358, -1359), the Federal Circuit vacated the district court’s refusal to award Rule 11 sanctions, and remanded the cases for a determination of an appropriate sanction.
The district court had ruled that Rule 11 sanctions only apply “[w]here it is clear that a case lacks any credible infringement theory and has been brought only to coerce a nuisance value settlement.” The Federal Circuit held that the district court had applied the wrong standard for applying Rule 11 sanctions. Rather, the Fifth Circuit “has been emphatic” that the Rule 11 analysis is a strictly objective inquiry and “expressly rejected any inquiries into the motivation behind a filing.” Thus, an evaluation of Raylon’s litigation motives, i.e., whether it brought suit in good faith or to obtain nuisance value settlements, contradicts Fifth Circuit law and has no place in the Rule 11 analysis.
The Federal Circuit held that Raylon’s claim construction and infringement contentions were frivolous, that Rule 11 sanctions should have been granted, and remanded the cases for a determination of an appropriate sanction.