Greenblum & Bernstein, P.L.C.
Recent Litigation News in Intellectual Property
In This Issue
· Federal Circuit Affirms Summary Judgment Of Infringement On Different Ground
· Federal Circuit Affirms Judgment of Noninfringement
· Federal Circuit Vacates And Remands Case For Failure To Grant A Preliminary Injunction.
· Federal Circuit Affirms Award Of Costs And Attorney’s Fees Under 35 U.S.C. §285
· Federal Circuit Affirms Ruling That Claims Are Invalid Under The On-Sale Bar
· Federal Circuit Holds Claim Construction Of Related Patents In Earlier Suit Did Not Control Validity In Subsequent Suit
In Cheese Systems, Inc. v. Tetra Pak Cheese., (Appeal Nos. 2012-1463, -1501), the Federal Circuit affirmed a grant of summary judgment by the District Court for the Western District of Wisconsin finding infringement and that the defendant had not proven the patent-in-suit invalid.
The subject matter of the patent-in-suit involves commercial cheese-making vats. The patent-in-suit teaches a vat with contra-rotating paddles for stirring and cutting. When the paddles contra-rotate, they move in the same direction through a common volume. With co-rotation, when one set of paddles goes upward and cuts through the common volume, the other set of paddles goes downward and cuts through the common volume, and vice versa in the stirring mode.
The Federal Circuit stated that the district court had found a fact question on literal infringement, and the district court had denied summary judgment on that ground, but granted summary judgment of infringement under the doctrine of equivalents. The Federal Circuit held that the district court had unduly limited the claim language to require that the panels be “on the whole flat.” The Federal Circuit noted that the claim required only that a plurality of cutting edges lie in a generally common plane, and that the record amply supports that in the accused device, a plurality of stirring edges falls in the same plane. Thus, the Federal Circuit reversed the denial of summary judgment of no literal infringement, and stated that they need not reach the questions of equivalency or prosecution history estoppel.
Federal Circuit Affirms Judgment of Noninfringement
In Rembrandt Vision Tech v. Johnson & Johnson Vision (Appeal No. 2012-1510), the Federal Circuit affirmed the district court’s judgment that Johnson & Johnson Vision Care, Inc. (JJVC) does not infringe Rembrandt’s U.S. Patent No. 5,712,327 (’327 patent).
The subject matter of the ‘327 patent relates to contact lenses. The claims specifically recite a soft gas permeable contact lens. The court adopted the parties’ agreed construction of “soft gas permeable contact lens” as “a contact lens having a Hardness (Shore D) less than five.”
At trial, Rembrandt relied on expert testimony to prove that the accused lenses had a Shore D Hardness of less than five. However, the expert’s trial testimony did not match the opinions disclosed in his expert report, and the district court ultimately struck his testimony.
The expert had testified on direct examination that he had performed the steel ball Shore D Hardness test described in his expert report. During cross examination, the expert testified that he had tested a stack of lenses that was 6 mm thick, not 2.54 mm as he had disclosed in his expert report. He testified that the error in his report “might be a typo.” Despite the “typo,” the expert confirmed that he had tested a stack of 24 contact lenses. Subsequently, the expert suddenly changed course in the middle of cross-examination and testified that he did not follow the procedures listed in his expert report. He testified that he performed the Shore D Hardness using a different procedure, none of which was in his expert report.
JJVC renewed its motion to exclude the expert’s testimony and moved for judgment as a matter of law, and the court granted the motions.
On appeal, the Federal Circuit held that the district court correctly granted judgment as a matter of law. The Federal Circuit stated that district court did not abuse its discretion when it excluded the expert’s testimony. Federal Rule of Civil Procedure Rule 26 requires an expert witness to disclose in an expert report “a complete statement of all opinions the witness will express and the basis and reasons for them.” The purpose of the expert disclosure rule is to provide opposing parties reasonable opportunity to prepare for effective cross examination and perhaps arrange for expert testimony from other witnesses. An expert witness may not testify to subject matter beyond the scope of the witness’s expert report unless the failure to include that information in the report was “substantially justified or harmless.”
The Federal Circuit held that the district court did not err in concluding that the late disclosure was not substantially justified. The Federal Circuit concluded that the district court rightly found that there was simply no excuse for the expert waiting until cross-examination to disclose his testing procedures when he had submitted his expert report nearly six months prior to trial. Because Rembrandt failed to offer any admissible evidence that the accused lenses met the “soft gas permeable contact lens” limitation, the Federal Circuit affirmed the judgment of no infringement.
Federal Circuit Vacates And Remands Case For Failure To Grant A Preliminary Injunction.
In Aria Diagnostics, Inc. v. Sequenom, Inc., (Appeal No. 2012-1531), the Federal Circuit vacated and remanded the case to the district court for failure to grant a preliminary injunction.
The Federal Circuit held that the district court erred in its claim construction, and consequently erred in finding a substantial question of noninfringement. As such, the Federal Circuit reversed the district court’s conclusion that Aria had raised a substantial question of noninfringement.
The Federal Circuit also noted that the district found that price and market erosion would occur. The Federal Circuit stated that under its precedent, price erosion, loss of goodwill, damage to reputation, and loss of business opportunities are all valid grounds for finding irreparable harm. The district court, however, improperly found that price erosion and loss of market share were not irreparable.
Accordingly, the Federal Circuit vacated and remanded the case back to the district court for further proceedings consistent with its opinion
Federal Circuit Affirms Award Of Costs And Attorney’s Fees Under 35 U.S.C. §285
In Taurus IP v. DaimlerChrysler (Appeal Nos. 2008-1462, -1463, -1464, -1465), the Federal Circuit affirmed the district court’s award of $1,644,906.12 in costs and attorney’s fees under 35 U.S.C. §285.
After construing the claims, the district court granted summary judgment in favor of Chrysler and Mercedes, finding that use of their external websites does not infringe any of the asserted claims. The district court based its conclusion on two
independent grounds: (1) that Taurus had failed to show the presence of a “user” of the external websites, as required by claim 16, which recites “presenting
the product knowledge . . . to a user of the system” and (2) that Taurus had failed to show that the accused websites “receiv[e] user-defined relationship information” as also required by claim 16. The district court also found claims 16 and 27 anticipated under former 35 U.S.C. § 102(e)(2).
Subsequently, the district court found the suit to be exceptional under 35 U.S.C. § 285. Specifically, the court found Taurus’s pre-filing investigation to be deficient and determined that Taurus improperly “prolonged the litigation in bad faith” after construction of the disputed claim terms. In addition, the district court found that the suit was carried out “vexatiously.” The district court also relied on its findings that Taurus and “Spangenberg’s other companies” filed repetitive motions and that Spangenberg had engaged in witness tampering after Taurus had left the case. The district court found that Taurus did not challenge the amount of attorney fees requested, and awarded damages in the amount of $1,644,906.12, the cost of defending the suit.
On appeal, the Federal Circuit affirmed the district court’s claim construction, and further affirmed the findings of invalidity and no infringement. The Federal Circuit next carefully considered the record, and concluded that the district court properly found the suit to be exceptional. The Federal Circuit stated that “no reasonable litigant in Taurus’s position could have expected a finding that a web surfer accessing the accused external websites satisfied the requirement for a ‘user,’ as recited in claim 16,” and when “patentees have sought unreasonable claim constructions divorced from the written description, this court has found infringement claims objectively baseless.”
In sum, the Federal Circuit found that the findings of the district court supported the conclusion that the case was exceptional under 35 U.S.C. § 285, and accordingly affirmed the ruling.
Interestingly, the Federal Circuit in another decision issued this month, affirmed the district court’s finding that the case was exceptional under 35 U.S.C. § 285 and awarding attorney fees and costs. See Monolithic Power Systems, Inc. v. O2 Micro International Ltd. (Appeal No. 2012-1221).
Federal Circuit Affirms Ruling That Claims Are Invalid Under The On-Sale Bar
In Hamilton Beach Brands, Inc. v. Sunbeam Products, Inc. (Appeal No. 2012-1581), the Federal Circuit affirmedthe district court’s ruling that the asserted claims were invalid under the on-sale bar.
Both Hamilton Beach and Sunbeam sell competing versions of “slow cookers.” Hamilton Beach’s commercial embodiment of its patented invention is the Stay or Go® slow cooker. Hamilton Beach alleged that Sunbeam’s Cook & Carry® slow cooker infringed claims of the ’928 patent.
Sunbeam argued that the asserted claims of the ’928 patent were invalid because Hamilton Beach could not claim priority to the parent patent as it introduced new matter into the ’928 written description, which rendered the ’928 patent’s claims anticipated. Sunbeam further claimed that Hamilton Beach offered for sale and publicly used the Stay or Go® slow cooker, the commercial embodiment of the ’831 patent, more than one year prior to the ’831 patent’s application date rendering the ’928 patent claims invalid.
The district court agreed and granted Sunbeam’s summary judgment motion, finding that the Cook & Carry® slow cooker did not infringe the asserted claims of the ’928 patent. The district court also concluded that the ’928 patent was invalid because it was not entitled to an earlier filing date than the one listed on its face because Hamilton Beach added new matter when it filed its continuation; therefore, the sales of the Stay or Go® slow cooker more than one year before that date served as invalidating sales and uses of the ’928 patent under the on-sale and public use bars of 35 U.S.C.§ 102(b). The district court further found that, even if the ’928 patent was entitled to an earlier priority date, there were invalidating commercial offers to sell the Stay or Go® slow cooker prior to the critical date.
On appeal, the Federal Circuit noted that the on-sale bar applies when two conditions are satisfied before the critical date: (1) the claimed invention must be the subject of a commercial offer for sale; and (2) the invention must be ready for patenting. An actual sale is not required for the activity to be an invalidating commercial offer for sale. An attempt to sell is sufficient so long as it is “sufficiently definite that another party could make a binding contract by simple acceptance.”
The Federal Circuit found that Hamilton Beach’s supplier responded prior to the critical date that it was ready to fulfill an order. In other words, the supplier made an offer to sell the slow cookers to Hamilton Beach. At that point, the commercial offer for sale was made. The Federal Circuit additionally found that the invention was “ready for patenting” because the descriptions and depictions of the slow cooker shown to its retail customers were sufficiently precise to enable a person of ordinary skill to build the invention. In sum, Hamilton Beach had received a commercial offer for sale from its foreign supplier, and the patented invention was ready for patenting at the time of the sale—as supported by the working prototypes and detailed drawings and descriptions. Accordingly, the Federal Circuit affirmed the district court’s ruling that the asserted claims were invalid under the on-sale bar.
Federal Circuit Holds Claim Construction Of Related Patents In Earlier Suit Did Not Control Validity In Subsequent Suit
In Trading Technologies Intl v. Open E Cry, LLC (Appeal No. 2012-1583), the Federal Circuit held that a holding in an earlier case, Trading Technologies
International, Inc. v. eSpeed, Inc., which considered two related patents
from the Trading Technologies’ portfolio, did not control the issues in the present case.
The patents-in-suit shared a common written description with two related patents which had been previously considered by the Federal Circuit in the eSpeed case. The district court, based on the eSpeed case, concluded that the patents were invalid due to inadequate written description. The Federal Circuit, however, held that the eSpeed case did not control the validity determination, because although the written descriptions were the same, the claims in the two cases were different. Thus, the case was reversed and remanded.