Federal Circuit Affirms Finding Of Inequitable
Conduct
In Intellect Wireless, Inc. v.
HTC Corp., (Appeal No. 2012-1658), the Federal Circuit affirmed that HTC had established inequitable conduct.
The Federal
Circuit affirmed the district court holding that clear and convincing
evidence established that the inventor “(1) misrepresented or omitted
information material to patentability, and (2) did so with specific intent to
mislead or deceive.”
The inventor
claimed in a Rule 131 declaration that the invention “was actually reduced to
practice and was demonstrated at a meeting . . . in July of 1993.” This was asserted to overcome a prior art
reference, but the invention was never actually reduced to practice. The inventor later filed a revised
declaration that implied reliance upon constructive reduction to practice,
but this did not expressly correct the previous false statements as required
to cure the misconduct.
The district
court found that the inventor had made false statements of actual reduction
to practice during the prosecution of other patents, claimed to have built a
device capable of receiving images wirelessly when it only displayed
preloaded images, and referenced a product brochure and commercialization
when there was no product. The
district court found that there was intent to deceive based on this “pattern
of deceit,” and the Federal Circuit affirmed, holding that “the district
court did not clearly err in concluding that specific intent to deceive the
PTO was the most reasonable inference.”
Federal Circuit Affirms Summary
Judgment Of Non-Infringement Due To Patent Exhaustion
In Keurig, Inc. v. Sturm Foods, Inc. (Appeal
No. 2013-1072), the Federal Circuit affirmed summary judgment of no
infringement.
Keurig,
a manufacturer of single-serve brewers and cartridges owns patents directed
to brewers, cartridges, and methods of using them. Keurig sued Sturm alleging that the use of
Sturm’s cartridges infringed their method patent. Keurig did not assert its apparatus claims
covering the cartridges.
Sturm
asserted the affirmative defense of patent exhaustion, alleging that Keurig’s
method claims were exhausted by the sale of the brewer. Keurig argued that the Supreme Court’s
substantial embodiment test required the article to include all the inventive
aspects of the patented method with no reasonable non-infringing use before
triggering exhaustion. Keurig asserted
that the brewer can be used in non-infringing ways and therefore the method
claims are not exhausted.
The
district court held that the substantial embodiment test did not apply
because it applies to the sale of unpatented articles and the Keurig brewer
is patented. Keurig’s method patent is
therefore “not saved from exhaustion merely because a consumer could
potentially use non-Keurig cartridges in a Keurig brewer in a non-infringing
way.”
The
Federal Circuit explained that once a patentee has received the reward for
the article, “it may fairly be said that the patentee has received his reward
for the use of the article.” The Court
citied modern and nineteenth century cases noting that “as the Supreme Court
long ago held, where a person has purchased a patented machine of the
patentee or his assignee, this purchase carries with it the right to the use
of the machine so long as it is capable of use.” The Federal Circuit therefore affirmed the
district court holding of non-infringement by exhaustion.
Federal Circuit Affirms Summary
Judgment That Claims Were Indefinite
In Ibormeith IP v. Mercedes-Benz USA,
(Appeal No. 2013-1007), the Federal Circuit affirmed summary judgment of
invalidity base on indefiniteness.
At issue
was the Ibormeith patent titled “Sleepiness Detection for Vehicle Driver or
Machine Operator.” Ibormeith alleged
infringement by Mercedes’ “Attention Assist.” Mercedes moved for summary judgment, asserting indefiniteness of the
means-plus-function claim limitations.
The
district court held that the patent specification did not include the
required structure for performing the functions claimed. The algorithm necessary to the claims did
not include what “computational means performs those function.” The Federal Circuit agreed with the
district court noting that Ibormeith “fails in the necessary attempt to steer
a course that permits proof of infringement yet avoids invalidity,” and that
a “description of an algorithm that places no limitations on how values are
calculated, combined, or weighted is insufficient to make the bounds of the
claim understandable.” The Federal
Circuit therefore affirmed the summary judgment.
Federal Circuit Affirms Issuance Of Permanent Injunction
In Broadcom Corp. v. Emulex Corp. (Appeal
No. 2012-1309), the Federal Circuit affirmed the district court findings of
non-obviousness and infringement, and grant of a permanent injunction.
The
obviousness determination included affirmative signs of non-obviousness such
as long felt need in the industry, as well as recognizing that at least one
element of the claims was missing from the prior art. Emulex argued non-infringement, but their
expert admitted that the accused device met the claim limitations “at least
some of the time.” The Federal Circuit noted that it is well settled that an
accused device that “sometimes, but not always, embodies a claim nonetheless
infringes.”
The
district court considered the unique market when assessing the four eBay factors in granting permanent
injunction. Broadcom and Emulex are
competitors in a market with four main customers that hold supplier
competitions in which the winner captures the market until the next round of
design competitions. The district
court found irreparable harm from the infringement, that money damages were
inadequate due to incumbency effects from the design-win market, and granted
an injunction with an eighteen month sunset period to avoid penalizing the
customers and disrupting the industry. The Federal Circuit agreed that the evidence showed lost market share
as a result of infringing competition, which is a clear measure of
competition and harm, and held that the district court grant of an injunction
was not an abuse of discretion. The
Federal Circuit therefore affirmed.
Federal Circuit Affirms No Infringement and Invalidity for
Lack of Written Description
In Synthes USA, LLC
v. Spinal Kinetics, Inc., (Appeal Nos. 2013-1047, -1059), a divided
Federal Circuit upheld the district court’s determination that Synthes’
claims lacked written description support.
The district court construed the claims more broadly than
asserted by Spinal Kinetics (“SK”), but not as broadly and Synthes
asserted. After a trial, the jury
concluded that SK’s devices did not infringe and that SK proved by clear and
convincing evidence that the claims were invalid for lack of written
description. On appeal, the Federal
Circuit agreed that substantial evidence showed Synthes’ broadening of claims
during prosecution was not supported by the written description in the
specification.
SK
also appealed the district court denial of attorneys’ fees. The Federal Circuit noted that attorneys’
fees may be awarded in exceptional cases where it is established by clear and
convincing evidence that “(1) the litigation is brought in subjective bad
faith, and (2) the litigation is objectively baseless.” After an independent review of the
record in its entirety, the Federal Circuit agreed with the district court
that SK failed to demonstrate with clear and convincing evidence that it is
entitled to attorney fees under § 285. |
