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Federal Circuit Affirms Judgment of Non-infringement of UTS' Touch-Tone Telephone Tech Patent
Board of Regents of the University of Texas System v. BENQ America Corp., et al.
No. 2007-1388,
U.S. Court of Appeals for the Federal Circuit, 07/24/2008
Holding: The U.S. Court of Appeals for the Federal Circuit in this appeal affirmed a district court's summary judgment of non-infringement of a patent relating to non-verbal entry technology that uses “syllabic elements” via a standard touch tone telephone. In particular, the Federal Circuit, citing specification and prosecution history, concluded that the proper construction of "syllabic element" is a one-syllable letter group that either comprises a word or can be combined with other one-syllable letter groups to form a word. Further, the Federal Circuit saw no error in the district court’s claim construction, which clarified that a syllabic element may be as small as a single letter. In the final judgment stipulation, the parties agreed that none of the accused devices relied on a vocabulary of "only syllabic elements," as the term "syllabic elements" was construed” by the district court. Thus, the district court properly entered judgment that the accused devices did not infringe the asserted claims of the patent-at-issue. More...
Federal Circuit Remands Intravascular Stent Patent Dispute Between Boston Scientific, Scimed and Dr. Jang
Jang v. Boston Scientific Corp., et al.
No. 2007-1385,
U.S. Court of Appeals for the Federal Circuit, 07/15/2008
Holding: The Federal Circuit in this appeal vacated the district court's consent judgment in a contract dispute over intravascular stent patents, and remanded the case for clarification. Plaintiff-appellant David Jang as the inventor of patents-at-issue had earlier filed contract claims against patent assignees Boston Scientific and Scimed to collect payments. The right to these payments depended on whether the sale of certain devices by Boston Scientific and Scimed were “covered by” (i.e., would have infringed) the patents at issue. The district court issued a consent judgment that included its earlier claim constructions. Aggrieved, Jang timely appealed from the judgment, challenging only the district court’s claim construction with respect to the patents. In this appeal, the Federal Circuit found that the consent judgment suffered from two ambiguities. First, the Federal Circuit found it impossible to discern from the stipulated judgment which of the district court’s claim construction rulings would actually affect the issue of infringement. Second, the stipulated judgment provided no factual context for the claim construction issues presented by the parties. In particular, nothing in the stipulated judgment provided any context with respect to how the disputed claim construction rulings related to the accused products. More...
Federal Circuit: Laser Vision Correction Tech Inventor Barred by Laches to Bring Suit Against Advanced Medical and VISX
Serdarevic v. Advanced Medical Optics, Inc., et al.
No. 2008-1075,
U.S. Court of Appeals for the Federal Circuit, 07/16/2008
Holding: The U.S. Court of Appeals for the Federal Circuit in this appeal affirmed a district court's dismissal of an inventorship action for patents relating to laser vision correction technology. Plaintiff-appellant Olivia N. Serdarevic (“Serdarevic”) brought suit on September 15, 2006 against Advanced Medical Optics, Inc. (“AMO”) and VISX, Inc. ("VISX") to seek correction of inventorship, claiming she was the co-inventor or inventor of the technology. The patents were issued between 1987 and 1998. The U.S. District Court for the Southern District of New York found that the equitable defense of laches barred the inventorship claim. On appeal, the Federal Circuit affirmed the district court's finding that Serdarevic’s failure to bring her suit within the six year-limit was unreasonable because she was represented by counsel in 1999 and she did not explain why she was prevented from bringing this action while she was trying to license her alleged invention. Neither did the district court abuse its discretion in holding that Serdarevic had failed to meet her burden to rebut the presumption of evidentiary prejudice, because three witnesses with knowledge of Serdarevic’s inventorship claim all died during the period of her delay. For these reasons, the grant of summary judgment to defendant-appellee AMO and VISX was warranted. More...
Federal Circuit Blocks Generics-Makers, Finds Eisai's Aciphex Drug Patent Valid and Enforceable
Eisai Co. Ltd., et al v. Dr. Reddy's Laboratories, Ltd., et al.
No. 2007-1397, -1398,
U.S. Court of Appeals for the Federal Circuit, 07/21/2008
Holding: The U.S. Court of Appeals for the Federal Circuit in this appeal ruled that plaintiff-appellee Eisai's patent relating to its blockbuster anti-gastric acid drug Aciphex was valid and enforceable. Defendant-appellant Dr. Reddy's and Teva earlier attempted to manufacture a generics version of this billion-dollar earning drug under the Hatch-Waxman Act, 21 U.S.C. Section 355 and 35 U.S.C. Section 271 (e), and in the process challenged the validity of patent-at-issue. Unfortunately for them, the U.S. District Court for the Southern District of New York ruled in favor of patentee Eisai. On appeal, the Federal Circuit found that the district court properly concluded that the record did not support a case of obviousness of the patent as a matter of law. With regard to defendants-appellants' charge of inequitable conduct, the district court likewise correctly determined that Eisai' alleged acts during prosecution did not rise to the level of inequitable conduct, absent any proof of deceptive intent. For these reasons, the Federal Circuit affirmed the district court's finding that defendants-appellants failed to prove that the patent was invalid for obviousness or unenforceable for inequitable conduct. More...
Federal Circuit Reverses $84.6M Award Against Thomson in Muniauction's Online Bond Auction Patent Suit
Muniauction, Inc. v. Thomson Corp.
No. 2007-1485,
U.S. Court of Appeals for the Federal Circuit, 07/14/2008
Holding: The U.S. Court of Appeals for the Federal Circuit reversed a Pennsylvania district court's $84.6 million judgment that found defendant-appellant Thomson willfully infringed Muniauction's patent relating to online auction of municipal bonds. In ruling on plaintiff-appelllee Muniauction's claim of infringement, the Federal Circuit noted that the only theory of infringement presented by Muniauction was that of so-called joint infringement. The law of the Federal Circuit is axiomatic that a method claim is directly infringed only if each step of the claimed method is performed. Under court precedent, the issue of infringement in this case turned on whether Thomson sufficiently controls or directs other parties (e.g., the bidder) such that Thomson itself can be said to have performed every step of the asserted claims. In this case, Thomson neither performed every step of the claimed methods nor had another party perform steps on its behalf. Further, Muniauction had identified no legal theory under which Thomson might be vicariously liable for the actions of the bidders. Therefore, Thomson did not infringe the asserted claims as a matter of law. More...
Patent Law Commentaries
Following are Patent Law Commentaries elaborating on the significance of the most important of the Patent Law Summaries.
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
McKesson v. Bridge Medical: Inequitable Conduct Due to Lack of Full Disclosure in Patent Prosecutions
McKesson Information Solutions, Inc. v. Bridge Medical, Inc.
Posted: 01/18/2008
Commentary: The decision in McKesson Information Solutions Inc. v. Bridge Medical Inc., 487 F.3d 897 (Fed. Cir. 2007), has been referred to by many as “frightening,” “burdensome,” and “a whopper.” Indeed, the decision places a high burden on patent prosecutors to disclose essentially every action in any related co-pending application. The failure to do so may result in a declaration that the patent is unenforceable due to inequitable conduct. More...
Related summary: Federal Circuit Affirms Inequitable Conduct Ruling in McKesson Information Solutions Suit
