Federal Circuit
Reverses Summary Judgment Of Noninfringement
In Amdocs Limited v.
Openet Telecom Inc. (Appeal No. 2013-1212), the Federal Circuit reversed
the district court’s grant of summary judgment of noninfringement with
respect to three patents, and vacated the district court’s grant of summary
judgment of noninfringement with respect to a fourth patent.
Amdocs and Openet compete in the market for “data
mediation software” which helps internet service providers track their
customer’s network usage and generate bills. Amdocs filed an infringement action against Openet asserting
infringement of four patents.
Openet moved for summary judgment of noninfringement of
all four patents, and the district court granted the motions, finding that
Amdocs had not raised a genuine question of material fact as to whether the
accused devices practiced “completing” or “enhancing” “in a distributed
fashion”, a requirement which it construed to be common to all asserted
claims.
On appeal, the Federal Circuit agreed with the district
court’s claim construction of three of the patents, but found that
documentary evidence describing the structure and operation of the accused
product created genuine factual issues regarding whether the product meets
these constructions. Accordingly, for
the three patents, the Federal Circuit reversed the district court’s grant of
summary judgment and remanded the case.
Regarding the fourth patent, the Federal Circuit held that
the district court had erred in construing the term “a single record represent(ing)
each of the plurality of services” to mean “one record that includes customer
usage data for each of the plurality of services used by the customer on the
network.” The Federal Circuit held that the term does not simply encompass a
record in which usage data is separately represented, but includes a record
in which usage data is represented in the aggregate. Accordingly, the Federal Circuit vacated
the district court’s claim construction as erroneous, and remanded the case
for determination of infringement under the proper claim construction.
Federal Circuit Reverses Summary
Judgment Of Invalidity
In ScriptPro LLC v.
Innovation Associates (Appeal No. 2013-1561), the Federal Circuit
reversed the district court’s summary judgment of invalidity.
ScriptPro sued Innovation for infringing its patent related
to automated prescription container dispensing system that automatically
fills and labels pill bottles. Innovation moved for summary judgment of
invalidity under 35 U.S.C. § 112 ¶ 1. The
district court granted summary judgment finding that the patent was invalid
for lack of an adequate written description. The district court determined
that the specification of the patent-in-suit described a machine having
sensors, but that the asserted claims did not recite a sensor. The district court concluded that based
upon the written description in the patent, no reasonable jury could find
that the machine disclosed in the patent could operate without sensors.
On appeal, the Federal Circuit noted that under 35 U.S.C.
§ 112(a), a specification must contain a description of an invention that
would enable any person that is skilled in the field of that invention to
make and use the invention. The Federal
Circuit also noted that the patent did not include any dispositive language
describing sensors as essential elements. The patent specification did not
contain a “clear statement of limitation” because it described the collating
unit as “broadly include[ing]” and “broadly comrpris[ing]” the sensors. Other portions of the specification also
described the sensors as a “security feature” or could be read by a
reasonable, skilled artisan to mean that the sensors were optional.
Accordingly, the Federal Circuit reversed the district
court’s grant of summary judgment that the claims were invalid under § 112
for lack of written description, finding that sensors were not a required
component.
Federal Circuit Affirms Grant Of JMOL Of
No Infringement
In Mformation Technologies Inc. v. Research In Motion Ltd. (Appeal
Nos. 2102-1679, 2013-1123), the
Federal Circuit affirmed the district court’s judgment as a matter of law
(“JMOL”) that RIM did not infringe the asserted patent which related to
wireless activation and management of an electronic device without the need
to have physical access to the device.
Mformation filed a patent infringement suit against RIM. After trial, the jury found infringement of
all asserted claims of the patent and returned a verdict of $147.2 million in
favor of Mformation. RIM filed a JMOL motion, arguing that Mformation did not
present evidence that a connection is completely established before the start
of the “transmitting” sub-step in the patent. The district court granted RIM’s motion, overturning
the verdict and granted RIM’s conditional motion for a new trial.
On appeal, the Federal Circuit affirmed the district
court’s grant of JMOL of no infringement, upheld the award against Mformation
for $206,363.28 in
costs.
Federal Circuit Affirms Judgment Of Invalidity
For Obviousness-Type Double Patenting
In AbbVie Inc. v.
Kennedy Inst. Of Rheumatology. (Appeal No. 2013-1545), the Federal
Circuit affirmed district court judgment of invalidity for obviousness-type
double patenting.
AbbVie sought a declaratory judgment that claims of the ‘442
patent were invalid over the ‘766 patent for obviousness-type double
patenting. After a bench trial, the district court ruled that all of the
claims that were the subject of the declaratory judgment action were invalid
over claims of the ‘766 patent.
Kennedy had conceded that the ‘766 patent encompasses the same
inventive subject matter as the ‘442 patent (i.e., that the ‘766 patent is a
dominant patent), but contended that the ‘442 patent was patentable over the ‘766
patent arguing that the ‘766 patent claims a “broad genus” of methods for
treating rheumatoid arthritis, whereas the ‘442 patent claims a “narrower
species” of those treatment methods with unexpected results.
The
Federal Circuit noted that a crucial purpose of the doctrine of
double patenting was to “prevent an inventor from securing a second, later
expiring patent for the same invention.” The Federal Circuit stated that patents claiming overlapping subject
matter that were filed at the same time could have different patent terms due
to examination delays at the PTO, and where an applicant chooses to file
separate applications for overlapping subject matter and to claim different
priority dates for the applications, the separate patents will have different
expiration dates since the patent term is measured from the claimed priority
date. The Federal Circuit stated that
when such situations arise, the doctrine of obviousness-type double patenting
ensures that a particular invention (and obvious variants thereof) does not
receive an undue patent term extension.
The
Federal Circuit held that the doctrine of obviousness-type double patenting
continues to apply where two patents that claim the same invention have
different expiration dates, and that Kennedy would not be entitled to an extra
six years of monopoly solely because it filed a separate application unless
the two inventions are patentably distinct. The Federal Circuit then
concluded that the ‘442 patent does not claim a species manifesting unexpected
results, and therefore the ‘442 patent would have been obvious over the ‘766
patent. Accordingly, the Federal
Circuit affirmed the district court’s judgment that the ‘442 patent is
invalid for obviousness-type double patenting in light of the ‘766 patent. |
