Federal Circuit Affirms Declaratory
Judgment Against Co-Inventorship
In General Electric
Co. v. Wilkins (Appeal No. 2013-1170), the Federal Circuit affirmed
declaratory judgment against co-inventorship of GE’s ‘985 patent because
Wilkins failed to prove it by clear and convincing evidence.
“Because the issuance of a patent creates a presumption
that the named inventors are the true and only inventors, the burden of
showing misjoinder or non-joinder of inventors is a heavy one and must be
proved by clear and convincing evidence.” The Federal Circuit reviews inventorship without deference as it is a
question of law, but credibility determinations are entitled to strong
deference.
A putative inventor’s credible testimony must have
corroboration, which is measured under a “rule of reason” standard. The Federal Circuit noted that “in order
for the rule of reason requirement to even apply … the putative inventor must
first provide credible testimony,” and agreed with the district court that
Wilkins did not present any credible testimony that could be
corroborated. Nevertheless, the
district court analyzed the presented evidence and found no clear and
convincing evidence of Wilkins’ co-inventorship of the ‘985 patent. The Federal Circuit found no error in the
district court analysis of the evidence and affirmed the decision.
Federal Circuit Reverses PTAB
Interference Dismissal
In Tobinick v.
Olmarker (Appeal No. 2013-1499), an appeal from the USPTO in an Interference, the PTAB construed “administered locally”
as administering “directly to the site where it is intended to act…” Based on this construction it found that
Tobinick’s patent application did not include written description support for
the interference.
The Federal Circuit affirmed the claim construction, but
found that “Tobinick’s application contains sufficient written description
support … because it describes administering … adjacent to a herniated spinal
disc, which is the site where the compound is intended to act…” Olmarker argued that this is not local
administration because the medicine is not administered directly to the nerve
root. While other administrations in
the Tobinick application cover non-local administration, the Court held that
“directly to the site where it is intended to act, that is, to the location
where the nucleus pulposus is causing the symptoms of the nerve disorder,” is
local administration. The Federal
Circuit reviewed for substantial evidence and found that the PTAB finding of
lack of adequate written description is not supported by substantial
evidence. Accordingly, the Court
reversed and remanded for further proceedings.
Federal Circuit Affirms Invalidity
Summary Judgment
In Suffolk Tech v.
Google (Appeal No. 2013-1392), the Federal Circuit affirmed the grant of
summary judgment of invalidity. The
district court held that claims 1, 7, and 9 were anticipated by a Usenet
newsgroup Post; and Suffolk stipulated that “in light of the district court’s
prior art, claim construction, and expert testimony rulings, claim 6 was also
anticipated.” Suffolk then appealed.
The Federal Circuit analyzed and
affirmed the claim construction. The
Court then noted that “public accessibility has been called a touchstone in
determining whether a reference constitutes a printed publication.” The anticipating reference was a newsgroup
post by a college student answering a question, and commented on by six other
individuals. This constituted “publicly
accessible” and the Federal Circuit stated that “a printed publication need
not be easily searchable after publication if it was sufficiently
disseminated at the time of its publication.”
Suffolk’s validity expert initially
opined that the Post did not anticipate claim 6, but offered no opinion as to
claims 1, 7, and 9. After the district
court issued its claim construction, the expert filed a supplemental report
stating that it did not anticipate claim 1. The district court excluded that portion of the supplemental
report. The Federal Circuit reviewed
this decision for abuse of discretion, and although it did “not conclude that
every time a validity expert goes from having no opinion concerning a claim
to having an opinion,” that it should be excluded, but did conclude that the
district court did not abuse its discretion in excluding it in this case.
The Federal Circuit found that
Suffolk’s arguments against summary judgment were merely attorney arguments
without expert testimony or evidentiary support. The Court noted that holding against
summary judgment because Suffolk “can still attack Google’s affirmative case
(on cross-examination or otherwise)” would “improperly empower
cross-examination with the ability to defeat nearly all motions for summary
judgment.” The Federal Circuit
therefore affirmed the grant of summary judgment of invalidity.
Federal Circuit Affirms In Part /
Reverses In Part Summary Judgment of Non-Infringement
In GE Lighting Solutions,
LLC, v. AgiLight, Inc. (Appeal No 2013-1267), after claim construction, the parties stipulated to non-infringement
of the ‘140 and ‘771 patents. The
district court entered partial summary judgment consistent with the
stipulation and granted AgiLight’s motion for summary judgment of non-infringement
of the ‘896 and ‘055 patents.
The Federal Circuit held that the district court
incorrectly construed “IDC Connector” to meet the limits of other claims and
the embodiment rather than using the plain meaning. The Court notes that claim construction
departs from the plain meaning when the inventor acts as a lexicographer,
clearly redefining a term, or when the inventor makes a disavowal, making it
clear “that the invention does not include a particular feature.” There was no lexicography or disavowal in
the ‘140 and ‘771 patents and the Court reverses and remands for further
proceedings based on the plain meaning of the claim term.
All the asserted claims of the
‘896 patent recite a light engine with an “optical element having a
substantially ellipsoidal inner profile and generally spherical outer
profile.” The district court held that
this meant the entire inner profile must be ellipsoidal. The AgiLight structure, therefore, did not
have a substantially ellipsoidal inner profile. The Federal Circuit found that the district
court erred in construing this to mean that the entire inner profile must be
ellipsoidal as this would exclude the only embodiment in the ‘896 specification. The Court noted that there is “a genuine
factual dispute as to whether the AgiLight structure includes a substantially
ellipsoidal inner profile and reversed the grant of summary judgment. One judge dissented as to the ‘896 patent.
The
Federal Circuit affirmed the grant of summary judgment of non-infringement of
the ‘055 patent agreeing with the district court that AgiLight’s concave lens
was not an “annular gasket” as in the GE Lighting claims. Accordingly, the Court affirmed summary
judgment of non-infringement of the ‘055 patent and reversed and remanded the
summary judgment of non-infringement of the ‘140, ‘771, and ‘896 patents.
Federal Circuit Affirms Limited
Sanctions: Striking Defense and Counterclaims, Awarding Attorney Fees
In Monsanto Co v. E.I. Du Pont De Nemours
and Co. (Appeal No. 2014-1349), the Federal Circuit affirmed limited
sanctions on different reasoning than the district court. DuPont stacked, or combined, its OGAT seed
trait with a Roundup Ready (RR) trait which it had licensed from
Monsanto. DuPont found that the
OGAT/RR stack produced greater yields in field trials, but did not
commercialize it and discontinued development in 2011 or 2012. In 2009 Monsanto sued DuPont for breach of
the license and infringement of the ‘247 patent. DuPont argued that the license allowed
stacking and that if the license were interpreted not to allow it, then the
license should be reformed. The
district court concluded that the license prohibited OGAT/RR stacking, but
granted DuPont leave to file a second amended answer and counterclaims to
reform the license and defenses.
Delaware,
the licensing state, allows contract reformation for three reasons and DuPont
asserted all three (1) mutual mistake, (2) DuPont’s
unilateral mistake and Monsanto’s knowing silence, and (3) Monsanto’s
fraud. DuPont claimed that it did not
at any time understand the license to restrict stacking of similar traits
such as OGAT and RR. As this assertion
put “its subjective belief concerning its stacking rights at issue,” the
district court gave DuPont the option to dismiss the claims or produce
previously withheld documents. These
documents included internal email by in-house attorneys and negotiators of
the license advising that DuPont could not commercialize an OGAT/RR stack.
Monsanto
moved for, and the district court granted, sanctions due to DuPont’s
misrepresentation of its subjective belief concerning stacking rights. The court held that DuPont had perpetrated
a fraud on the court and abused the judicial process. The district court struck DuPont’s
reformation defense and counterclaims and after finding bad faith, awarded
attorney fees limited to fees incurred by Monsanto in defending against
DuPont’s reformation counterclaims after its request to restore the claims or
incurred for the sanctions motions.
DuPont
appealed, arguing that it was improperly sanctioned for “making reasonable
legal arguments” that the license allowed stacking, that the documents did
not show misrepresentation, that employee statements were “merely
conservative legal advice,” and that its conduct was not fraud on the
court. The Federal Circuit agreed with
the district court that DuPont showed bad faith and that its assertions of
subjective belief concerning the license were factual statements rather than
legal arguments; but did not agree that its conduct met the high standard for
“fraud on the court.” In the 8th Circuit fraud on the court is narrowly defined as “the most egregious
misconduct directed to the court itself, such as bribery of a judge or jury
or fabrication of evidence by counsel.” The Court found, however, that the 8th Circuit allows for
sanctions in cases of bad faith and does not require the higher standard of
“fraud on the court.”
The
Federal Circuit concluded that the district court did not abuse its
discretion in imposing sanctions noting that, “[b]ecause the district court
correctly found that DuPont had abused the judicial process and acted in bad
faith by making affirmative factual misrepresentations and because the court
imposed narrowly-tailored sanctions, we affirm.” |
