Federal Circuit Reverses Judgment Of Infringement
Under The Doctrine Of Equivalents
In Integrated Technology Corp. v. Rudolph Technologies, Inc. (Appeal
No. 2012-1593, -1618), the Federal Circuit held that prosecution
history estoppel precluded the application of the doctrine of equivalents and reversed the judgment of infringement under the doctrine of
equivalents.
The
case related to inspection equipment for probe cards used to test chips on
semiconductor wafers. During prosecution of the patent-in-suit, the patent owner
filed an amendment which narrowed the scope of the original claim in response
to patentability rejections. The Federal Circuit determined that the patent
owner had surrendered the territory between the original and issued claims,
including the equivalent, and further had not established that the reason for
the narrowing amendment was no more than tangentially related to the
equivalent or that the equivalent would have been objectively unforeseeable
to one of ordinary skill in the art. Thus,
the Federal Circuit held that prosecution history estoppel barred the
application of the doctrine of equivalents.
Additionally,
the Federal Circuit reversed the finding of willfulness, vacated the award of
enhanced damages, affirmed
the award of damages for literal infringement, vacatedthe award
of attorneys’ fees and costs, and remanded the case. The Federal Circuit also
held that the district court did not abuse its discretion in finding no
laches.
Federal Circuit Reverses Grant Of
Preliminary Injunction
In LifeScan Scotland, Inc. v. Shasta
Technologies, LLC (Appeal No. 2013-1271), the Federal Circuit reversed
the district court’s grant of a preliminary injunction.
The
case concerned blood glucose monitoring systems, which are used by
individuals with diabetes to assist them in maintaining healthy blood glucose
levels. The patent-in-suit claimed a
method for testing blood glucose using a “meter.” LifeScan sold 480 of its meters at below
cost prices and distributed the remaining 60% through health care providers,
who in turn gave the meters to diabetic individuals for free. LifeScan
distributes its meters in this way with the expectation and intent that
customers will use LifeScan meters with LifeScan test strips. Shasta does not sell blood glucose meters,
but competes with LifeScan in the market for test strips. Shasta argued that the sale and
distribution of LifeScan’s meters exhausted LifeScan’s rights under its
method patent because the meters substantially embody the invention.
The
Federal Circuit agreed with Shasta, and held that “patent
exhaustion principles apply equally to all authorized transfers of title in
property, regardless of whether the particular transfer at issue constituted
a gift or a sale.” The Federal Circuit further concluded that LifeScan’s meters
substantially embody the methods claimed in the
patent and that their distribution therefore exhausts LifeScan’s patent
rights. Accordingly, the district
court’s grant of a preliminary injunction was reversed and the case was
remanded.
Judge
Reyna dissented.
Federal Circuit Affirms Summary
Judgment Of Collateral Estoppel And Invalidity, But Reverses Summary Judgment Of No Inequitable Conduct
In Ohio Willow Wood Co. v. Alps South, LLC, (Appeal No. 2012-1642,
2013-1024), the Federal Circuit affirmed the district court’s grant of
summary judgment that OWW was collaterally estopped from challenging the
invalidity of certain claims of the ‘237 patent and that other claims were
invalid for obviousness. However, the
Federal Circuit reversed and remanded the issue of inequitable conduct.
During
the district court proceeding, Alps initiated two consecutive ex parte reexaminations of the ’237 patent in
the PTO. The district court stayed the
litigation during these reexamination proceedings.
While
the case was stayed, OWW sued another party in the U.S.
District Court for the Eastern District of Texas for infringement the ’182
patent. The ’182 patent issued from a continuation application of the ’237
patent. The Texas district court found the claims of the ’182 patent invalid
for obviousness, and the obviousness determination was affirmed on appeal.
On
appeal, OWW argued that the mere existence of different language in the
adjudicated claims of the ’182 patent and unadjudicated claims of the ’237
patent was sufficient to overcome collateral estoppel. The Federal Circuit disagreed, stating that
it’s “precedent does not limit collateral estoppel to patent claims that are
identical. Rather, it is the identity of the issues that were litigated that
determines whether collateral estoppel should apply.” The Federal Circuit then held that the
asserted claims of the ’237 patent were substantially similar to the
invalidated claims of the ’182 patent such that collateral estoppel applied.
In
overturning the district court’s grant of summary judgment of no inequitable
conduct, the Federal Circuit found that there were genuine issues of material
fact regarding materiality of withheld information and misrepresentations during
the reexamination proceedings and the alleged intent to deceive which precluded
the grant of summary judgment.
Federal Circuit Remands Case To Reconsider Apple’s Request
For A Permanent Injunction
In Apple Inc. v. Samsung Electronics Co., Ltd. (Appeal No. 2013-1129), the Federal Circuit affirmed the district court’s
denial of injunctive relief with respect to Apple’s design patents and trade
dress, but vacated the denial of injunctive relief with respect to Apple’s
utility patents.
Apple’s
patents claimed certain “ease-of-use” features for touchscreen devices. After prevailing at trial, Apple requested
entry of a permanent injunction against Samsung from importing or selling certain
infringing devices. The district court
denied the request.
On
appeal, the Federal Circuit agreed with the district court that Apple’s
evidence of ease-of-use as well as Samsung’s copying were insufficient to
establish the required causal nexus between the infringement and the alleged harm. Accordingly, the Federal Circuit upheld the
denial of an injunction for infringing the design patents and trade dress. However, with respect to the utility
patents, the Federal Circuit held that additional analysis was required to
assess whether Apple’s other evidence, including its ease-of-use evidence and
evidence of copying, in combination with survey evidence, would suffice to
establish irreparable injury. Thus,
the Federal Circuit remanded the case to the district
court to reconsider Apple’s request for a permanent injunction against
Samsung’s infringement of its utility patents. |
