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Federal Circuit Orders Star Scientific's Tobacco-Curing Patent Suit Against RJ Reynolds to Proceed
Star Scientific Inc. v. R.J. Reynolds Tobacco Co.
No. 2007-1448,
U.S. Court of Appeals for the Federal Circuit, 08/25/2008
Holding: The U.S. Court of Appeals for the Federal Circuit ruled that an infringement suit filed by Star Scientific, Inc. ("Star") against R.J. Reynolds Tobacco Company over patents directed at tobacco-curing technology should proceed to trial. The U.S. District Court for the District of Maryland earlier issued a judgment of unenforceability due to inequitable conduct, on the ground that Star failed to disclose in its patent application a letter and related data indicating that Chinese tobacco had lower levels of carcinogenic chemicals. On appeal, the Federal Circuit reversed. Specifically, it held that R.J. Reynolds was unable to present sufficient evidence of an intent to deceive the U.S. Patent and Trademark Office ("USPTO"), and that the supposedly withheld information was not material enough to trigger a finding of inequitable conduct against patentee. With regard to the issue of indefiniteness, the district court held that the term "anaerobic condition" is indefinite and thus, since it appeared in every asserted independent claim, held that all asserted claims were invalid as indefinite. According to the Federal Circuit, however, because the claim term "anaerobic condition" was not indefinite, it reversed the grant of summary judgment to RJ Reynolds. On the basis of the foregoing, the Federal Circuit reversed the district court's judgment of inequitable conduct and indefiniteness against Star Scientific, and remanded the case for further proceedings consistent with its opinion. More...
Federal Circuit Upholds Dismissal of Prasco's Suit for Declaratory Judgment on Medicis' Triaz Patents
Prasco LLC v Medicis Pharmaceutical Corp. and Imaginative Research
No. 2007-1524,
U.S. Court of Appeals for the Federal Circuit, 08/15/2008
Holding: The U.S. Court of Appeals for the Federal Circuit affirmed a district court's dismissal of a suit brought against Medicis Pharmaceutical Corp. by a generics manufacturer that sought a non-infringement judgment. In this case over patents relating to the benzoyl peroxide cleansing product Triaz, the Federal Circuit held that plaintiff-appellant Prasco, LLC ('Prasco") failed to establish a case or controversy under Article III of the U.S. Constitution. In particular, the marking of products with applicable patents does not suffice to create declaratory judgment jurisdiction, absent any actual injury traceable to the patentee. Here, Medicis had not asserted any rights against Prasco related to its patents, nor taken any affirmative actions concerning Triaz. In this regard, one prior suit concerning unrelated patents and products and Medicis’ failure to sign a covenant not to sue were simply not sufficient to establish that Prasco was at risk of imminent harm from Medicis and that there was an actual controversy between the parties of sufficient immediacy and reality to warrant declaratory judgment jurisdiction. More...
Federal Circuit Issues Judgment to DSW in Shoe Display Patent Dispute with Shoe Pavilion
DSW, Inc. v. Shoe Pavilion, Inc.
No. 08-1085,
U.S. Court of Appeals for the Federal Circuit, 08/19/2008
Holding: In a patent dispute over store display methods between shoe retailers DSW and Shoe Pavilion, the U.S. Court of Appeals for the Federal Circuit ruled that DSW's patents were valid, and that Shoe Pavilion should pay the patentee damages for infringement. In reversing the district court's summary judgment, the Federal Circuit held that the district court did not construe or clarify the meaning of actual words in certain patent claims, but improperly read into them a new limitation not required by the claim language, specification, or prosecution history. On remand, the district court should compare the properly construed patent claims to Shoe Pavilion's modified display design to determine whether it infringed. With respect to the district court's summary judgment of no liability, the Federal District held that the district court misapplied the standard expressed in a Supreme Court precedent. In this regard, the district court erred in concluding that Shoe Pavilion’s reasonable steps and good faith efforts to bring its infringing activity to a timely end equated to an immediate cessation. Without a doubt, the law offers an infringer no exception to liability for the time it takes to terminate infringing activities, no matter how expeditious and reasonable its efforts. Thus, if the patents at issue were valid, damages were owed on the design for the 6-7 months of continued infringement while Shoe Pavilion phased out use of the displays in its stores. More...
Federal Circuit Finds Cordis' Cardiac Catheters Infringed Dr. Voda's Patents, But Affirms Denial of Injunctive Relief
Jan K. Voda v. Cordis
2007-1297, -1343,
U.S. Court of Appeals for the Federal Circuit, 08/18/2008
Holding: The U.S. Court of Appeals for the Federal Circuit affirmed a jury's finding that Cordis Corp.'s curved catheter infringed Dr. Jan K. Voda's patented catheters that consisted of straight portions. The Federal Circuit explained that Voda introduced substantial evidence establishing that the redesigned curve portion of the XB catheter meets the "straight" and "substantially straight limitations" under the doctrine of equivalents. On the issue of willfulness, the Federal Circuit found that, based on case records, a jury instruction in accord with the In re Seagate objective recklessness standard may have changed the result of the jury verdict on willfulness. Accordingly, it vacated the finding of willfulness and remanded the case for a determination of whether Cordis’ infringement was willful under the objective recklessness standard of Seagate. With regard to the district court's denial of permanent injunction, the Federal Circuit rejected Voda's argument based on the irreparable harm to its exclusive licensee. The Federal Circuit reasoned that irreparable harm must fall on the party seeking injunction. Here, Voda failed to show that Cordis’s infringement caused him irreparable injury and that monetary damages were inadequate to compensate him. Accordingly, the Federal Circuit affirmed the district court’s denial of Voda’s request for a permanent injunction. More...
Federal Circuit Reverses Microsoft's $8M Award and Patent Invalidity Judgment
Research Corp. Technologies Inc. v. Microsoft Corp.
No. 2006-1275,
U.S. Court of Appeals for the Federal Circuit , 08/01/2008
Holding: In this dispute over patents relating to image halftoning technology, the U.S. Court of Appeals for the Federal Circuit reversed the district court's finding of inequitable conduct against patentee Research Corporation Technologies ("RCT"), and reversed the award of $8 million in attorney's fees in favor of Microsoft Corp. ("Microsoft"). The district court found inequitable conduct because the inventors did not disclose their post-filing K factor tests to the U.S. Patent and Trademark Office ("USPTO"). On appeal, the Federal Circuit held otherwise, stating that because the inventor’s work occurred after the filing of the patent application, these K factor experiments were not material to their inventive activity. In the circumstances of this case, therefore, the inventors had no obligation to report their later tests to the USPTO. Importantly, the inventor and her coauthors published the K factor tests to the scientific community. Publication is an act inconsistent with an intent to conceal data from the USPTO. In addition to the district court's error in its analysis of the materiality prong, the Federal Circuit also found the district court erred in its intent analysis. Because the Federal Circuit vacated the district court's determination of unenforceability due to inequitable conduct, it also vacated the exceptionality finding and the grant of attorney fees in favor of Microsoft. More...
Patent Law Commentaries
Following are Patent Law Commentaries elaborating on the significance of the most important of the Patent Law Summaries.
Quanta Computer v. LG Electronics: Reviving Exhaustion, Applying It to Method Patents
Quanta Computer v. LG Electronics
Posted: 08/15/2008
Commentary: In the case Quanta Computer v. LG Electronics, ___ U.S. ____, 128 S.Ct. 2109 (2008), the United States Supreme Court clarifies and expands upon its holding in United States v. Univis Lens Co. In Univis, the court held that a patent is exhausted upon the sale of unfinished components that substantially embody the patent and which have no use except to practice the patent. In Quanta, the court clarified that the same analysis applies to process or method patents, not just product patents: When a component substantially embodies the process and cannot be used for any purpose other than to practice the patent, the process patent is exhausted upon sale of that component. The decision makes it more difficult for patentees to extract royalties from multiple parties for the same device. However, it revitalizes the integrity of the exhaustion doctrine and provides more certainty for downstream purchasers. More...
Related summary: Supreme Court Reverses Federal Circuit’s Ruling, Finds in Favor of Quanta in LG’s Computer Technology Patent Suit
Acumed II Addresses the Issue of Claim Preclusion and When a Patent Claim Could Have Been Brought
Acumed, LLC v. Stryker Corp., et al.
Posted: 05/20/2008
Commentary: In the recent case of Acumed, LLC v. Stryker Corp.,et al., (No. 2007-1115) (Fed. Cir., May 13, 2008) (“Acumed II”), the Federal Circuit addressed the meaning and application of language barring re-litigation of claims that “could have been brought” in a prior patent infringement case. More...
Related summary: Federal Circuit Reverses District Court’s Ruling in Acumed v. Stryker, Remands Case
Agrizap and Ortho-McNeil: Two Sides of Post-KSR Obviousness
Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc., et al.
Posted: 05/16/2008
Commentary: In KSR v. Teleflex, 550 U.S. ____, 127 S. Ct. 1727 (2007), the U.S. Supreme Court broadened the applicable test in determining whether an invention is “obvious.” As predicted by patent law pundits, the KSR decision was followed by a number of cases in which infringers defended their actions – and won – by having the patent in question declared invalid for obviousness under this new standard. The Court of Appeals for the Federal Circuit (the CAFC) recently heard and decided two separate cases that addressed the issue of obviousness post-KSR. These cases shed further light on the new standard for determining obviousness. While the results are quite different, the lessons for practitioners are, ultimately, the same. More...
Related summary: Federal Circuit Affirms Validity of Ortho-McNeil’s Patent On Epilepsy Drug Topomax
Judkins v. HT Window Fashion: Can’t Stop a Patent Holder from Contacting Your Clients About Possible Infringement
Judkins v. HT Window Fashion Corp.
Posted: 05/13/2008
Commentary: When a patent-holder discovers infringement, it’s not unreasonable for him to want to notify the alleged infringer’s clients of the infringement. Of course the alleged infringer would prefer that this communication with its clients not take place. But, as the Judkins case instructs, it will be nearly impossible for an alleged infringer to stop a patent holder from contacting its clients. More...
Related summary: Patent Owners Allowed to Warn Buyers about Competitor's Infringing Products: Judkins v. HT Window Fashion Corp.
Tafas v. Dudas: USPTO’s Efforts to Limit Patent Applicant Rights Are Void
Tafas v. Dudas, et al.
Posted: 05/12/2008
Commentary: In an effort to attack its notorious backlog, the USPTO enacted a group of rule changes that placed limits on, among other things, the number of claims a patent applicant could include and the number of times an applicant could amend and continue his application. Traditionally, patent applicants could take unlimited bites at the apple in their pursuit of their patent. In Tafas, the court struck down the rule changes as null and void, and exceeding the scope of the USPTO’s authority. While the Office has the power to enact procedural rules regarding the process, it cannot enact substantive rules – these rules are substantive since they dramatically alter existing policy and the rights and obligations of patent applicants. More...
Related summary: USPTO Rules Are Void For Being Contrary to Law, VA District Court Declares
