Federal Circuit Affirms Grant Of
Summary Judgment Of Invalidity And Non-infringement
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. |
