Posts Tagged: "Chief Judge Sharon Prost"

CAFC: Claim construction is appropriate even where term has a plain and ordinary meaning

Clare sued Chrysler for infringement of two patents on hidden storage boxes for pick-up trucks. Clare argued that the limitations do not need a construction because the meaning is plain to a lay person. The Court disagreed, holding that even where a term has a plain and ordinary meaning, claim construction is appropriate where there is a dispute over the scope of the terms. Here, Clare argued that a storage box with a fluorescent orange external panel on a white pickup truck, and labeled “STORAGE” would meet the limitations, so long as the inside of the storage box was not visible from the outside. Chrysler argued that the external appearance limitations should take into account the external hinged panel used to access the storage box. In view of this dispute, the district court correctly resolved it construing the claim.

Federal Circuit Affirms District Court on Finding of Assignor Estoppel

The Court affirmed that B/E could not challenge the validity of MAG’s patents, because of assignor estoppel. In this case, MAG acquired the patents by assignment from a third party, who in turn acquired the patents from the inventors. After this assignment, one of the inventors went to work for B/E. The district court held that this inventor was as assignor of MAC’s patents and was barred from challenging the validity of the patents under the doctrine of assignor estoppel. Further, B/E was held to be in privity with its current employee (and past inventor/assignor of the patents). The assignor estoppel therefore attached to B/E, which was barred from attacking the validity of the patents.

CAFC overturns $18 million verdict because jury improperly left to determine claim scope

Following a five-day trial, the jury found the asserted claims valid and infringed, and awarded Eon $18,800,000. In determining only that the terms should be given their plain and ordinary meaning, the district court left the ultimate question of claim scope unanswered, and improperly left it for the jury to decide. Instead of remanding, the Court independently found that, when read in their appropriate context, the terms “portable” and “mobile” could not be construed as covering the accused products at issue. The jury’s infringement finding was reversed.

Voluntary Narrowing of Patents Claims Waives Right to Later Jury Trial on Untried Claims

Nuance originally asserted over 140 claims from eight different patents against defendant ABBYY. The case was quickly referred to a special master for scheduling following Markman. The master followed Nuance’s proposal to limit the patents asserted at trial to four, and the total claims to fifteen. The district court agreed, and Nuance thereafter narrowed its case further: to seven claims from three patents. The jury found non-infringement on all claims. Eight months later, in a motion by ABBYY to compel costs, Nuance responded that the costs award should be stayed until its remaining patents had been tried. Nuance argued that the completed trial was only the “initial” trial and it had reserved its right to try the other patents in a subsequent trial.

Restricted Sales Do Not Exhaust Patent Rights Under Supreme Court Rulings

The Federal Circuit took the case en banc to review the applicability of the patent exhaustion doctrine under Mallinckrodt and Jazz Photo, in view of the Supreme Court’s decisions in Quanta and Kirtsaeng. The Federal Circuit affirmed the holdings in Mallinckrodt and Jazz Photo, and distinguished them from the Supreme Court’s decisions. In Quanta, the Supreme Court was reviewing whether a patentee’s rights in a product were exhausted by a licensee’s sale of a product.

Printed Matter Doctrine Implicates Matter That Is Claimed for What it Communicates

The Court held that printed matter must be claimed for what it communicates, and it is only afforded patentable weight if the claimed informational content has a functional or structural relation to the substrate. In this case, the Court held that the Board erred in finding that the origins of the web assets made them printed subject matter, because nothing in the claim called for the origin to be part of the web asset.

Patentee must show patentability over prior art from original case to amend in IPR

The Federal Circuit affirmed a patentee’s burden included showing patentability over prior art from the patent’s original prosecution history. Prolitec failed to show that its amended claim would still be patentable (non-obvious) over the combination of an original prior art reference and Benalikhoudja. Accordingly, the Court affirmed the Board’s finding of anticipation and obviousness. In her dissent, Judge Newman argued that the PTAB erred in denying Prolitec’s motion to amend, explaining the motion should have been granted because refusing to enter a proposed amendment that would resolve a dispositive aspect of claim breadth contradicted the America Invents Act.

CAFC uses de novo review because claim interpretation based solely on intrinsic evidence

On remand, the Federal Circuit used the de novo standard. Teva’s deferential “clear error” standard did not apply, because the district court did not make any factual findings based on extrinsic evidence in connection with its claim construction. Although extrinsic evidence may be used at trial, a district court must rely on subsidiary factual findings from that evidence to reach its claim construction, in order for any deference to arise on appeal. In this case, the Federal Circuit held that the intrinsic evidence led to a de novo conclusion that the district court conflated the claimed virtual machine with applications written to run on the virtual machine.

CAFC Overturns PTAB IPR Decision for Refusing to Consider Motivation to Combine

On appeal, Ariosa challenged the Board’s refusal to consider the background reference because it was not identified as a piece of prior art “defining a combination for obviousness.” The Federal Circuit agreed with Ariosa’s position that the background reference should have been considered by the Board, stating that background art must be considered even though such art is not true “prior art” presented as the basis of obviousness grounds for review. While the Court did agree that Ariosa’s articulation of the background reference’s impact on motivation to combine prior art references was lacking, the Court found the Board’s explanation for its failure to consider the reference equally lacking and thus warranting remand.

Jury Instruction On Meaning Of Claim Term Cannot Be Challenged After Agreed To By Parties

According to Limelight, the district court’s construction of “tagging” was limited to using a “pointer” or “hook” to prepend or insert a virtual server hostname into a URL. The Court rejected “prepending” as a claim limitation because even though the ‘703 patent described prepending as a preference, there was no indication from the claims or prosecution history that tagging was limited to this preferred embodiment. The Court found no error in the jury instructions and held that Limelight was bound to the stipulated construction of “tagging” originally read to the jury.

Infringement Under Doctrine of Equivalents Not Established by General Similarities

Advanced Steel sued X-Body Equipment for infringement of a method of loading shipping containers with bulk material. The “proximate end” of the claimed transfer base, for moving loaded material, was disputed by the parties. X-Body successfully argued on summary judgment that the piston-and-cylinder for its container packer was not connected to the proximate end of its transfer base, but instead was connected at a point on the bottom of the container packer. Under the district court’s construction of “proximate end” (which means “the extreme or last part lengthwise”), there was no literal infringement or infringement under the doctrine of equivalents.

CAFC Says Prior Art Reference Sufficiently Enabled Based on Applicant Admissions

As applied to Morsa’s application, the Court found that the specification made numerous admissions regarding the knowledge of a person of skill at the time of the invention. However, Judge Newman wrote in dissent that enablement of prior art must also come from the prior art, and that the majority improperly used information from the specification of the patent at issue to find that a prior art reference was enabling.

Federal Circuit en banc rules Laches Remains Defense in a Patent Infringement Suit

Despite the Supreme Court ruling that laches is no defense to a copyright infringement action brought during the statute of limitations, the Federal Circuit ruled laches can bar recovery of legal remedies in patent infringement. The Federal Circuit explained that the 1952 Patent Act codified the common law rule, meaning that laches was codified as a defense under 35 U.S.C. 282.
The Federal Circuit, sitting en banc, followed the common law principle that, ”[w]hen a statute covers an issue previously governed by the common law, [the Court] must presume that Congress intended to retain the substance of the common law.” The Federal Circuit also ruled that laches does not preclude an ongoing royalty.

Federal Circuit Affirms $15 Million Damages Award Against Samsung

Summit 6 LLC (“Summit”) sued Samsung Electronics Co. Ltd. and Samsung Telecommunications America, LLC (collectively “Samsung”) and others alleging infringement of U.S. Patent No. 7,765,482 (“the ’482 patent”), which relates to the processing of digital photos and other digital content before being transmitted over a network by client devices (e.g., cell phones). Summit’s expert testimony and the license resulting in settlement for another defendant, RIM, supported the damages verdict. The RIM license was comparable because both RIM and Samsung sell camera phones having the accused MMS functionality.

Patent owner must seek remedy in Federal Court of Claims for alleged TSA infringement

Astornet sued NCR Government Systems, MorphoTrust, and BAE Systems Inc., alleging that they supplied the Transportation Security Administration (“TSA”) with certain boarding pass scanning systems, and that TSA’s use of the equipment infringed or would infringe its patent. The complaints alleged that the defendants “induced (and contributed to) direct infringement by TSA by virtue of TSA’s use of equipment supplied by the defendants.” The Federal Circuit affirmed the dismissal based on 28 U.S.C. § 1498 barring the suits by limiting Astornet’s remedy to an action against the United States in the Court of Federal Claims.