Federal
Circuit Affirms Summary Judgment Of Infringement On Different Ground
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 |
