Intellectual Property and Tech Law Reports

SRAM Corp. v. AD-II Eng'g, Inc.

AD-II Engineering, Inc. (“AD-II”) appeals from an order of the United States District Court for the Northern District of Illinois denying AD-II’s motion for partial summary judgment of invalidity of claim 16 of SRAM Corporation’s (“SRAM”) U.S. Patent No. 4,900,291 (the “’291 patent”), granting SRAM’s cross-motion for partial summary judgment of no invalidity of claim 16 of the ’291 patent, and entering judgment of liability in favor of SRAM and an injunction against AD-II. See SRAM Corp. v. AD-II Eng’g, Inc., No. 00-CV-6675 and No. 01-CV-62 (N.D. Ill. Apr. 7, 2005) (Final Order). Because the district court erred in construing claim 16, we vacate the district court’s denial of partial summary judgment of invalidity, its grant of partial summary judgment of no invalidity, its judgment of liability in favor of SRAM, and its grant of an injunction against AD-II, and remand for further proceedings consistent with this opinion.

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Aero Prods. Int'l, Inc. v. Intex Recreation Corp.

Aero Products International, Inc. (“Aero Products”) and Robert B. Chaffee (collectively “Aero”) sued Intex Recreation Corp. (“Intex”), Quality Trading, Inc. (“Quality Trading”), and Wal-Mart Stores, Inc. (“Wal-Mart”) (collectively “defendants”) in the United States District Court for the Northern District of Illinois for infringement of U.S. Patent No. 5,367,726 (“the ’726 patent”) and for infringement of Aero’s registered trademark “ONE TOUCH.” Following a jury trial, the district court entered judgment of infringement and non-invalidity in favor of Aero with respect to the asserted claims of the ’726 patent and with respect to Aero’s trademark claim. Based upon that judgment, the court awarded Aero damages in the total amount of $6.9 million. See Aero Prods. Int’l, Inc. v. Intex Rec. Corp., No. 02 C 2590, 2004 U.S. Dist. LEXIS 25941 (N.D. Ill. Dec. 15, 2004) (“Order Denying New Damages Trial”). The total damages award was based on the jury’s finding that Aero was entitled to recover $2.95 million as patent infringement damages, which the district court doubled based upon the jury’s finding of willful infringement, Aero Prods. Int’l, Inc. v. Intex Rec. Corp., No. 02 C 2590, 2004 U.S. Dist. LEXIS 13453, at *13 (N.D. Ill. July 15, 2004) (“Order Awarding Enhanced Damages”), and $1 million as trademark infringement damages. See Order Denying New Damages Trial, 2004 U.S. Dist. LEXIS 25941, at *2-3. In addition, the district court entered a permanent injunction in favor of Aero. Aero Prods. Int’l, Inc. v. Intex Rec. Corp., No. 02 C 2590, 2004 U.S. Dist. LEXIS 28131 (N.D. Ill. Sept. 15, 2004); Aero Prods. Int’l, Inc. v. Intex Rec. Corp., No. 02 C 2590, 2004 U.S. Dist. LEXIS 18648 (N.D. Ill. Sept. 15, 2004).

Defendants now appeal from the court’s judgment. We see no error in the judgment of infringement and non-invalidity in favor of Aero. We do conclude, however, that, in the circumstances of this case, the award of both patent infringement and trademark infringement damages in favor of Aero represents an impermissible double recovery. Accordingly, we vacate the award of $1 million in trademark infringement damages in favor of Aero. We thus affirm-in-part, vacate-in-part, and remand to the district court for entry of a final judgment in favor of Aero consistent with this opinion.

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Sheinbein v. USPTO

Sol Sheinbein appeals from the judgment of the United States District Court for the District of Columbia sustaining the decision of the United States Patent and Trademark Office (“USPTO”) excluding Sheinbein from practice before the USPTO. Sheinbein v. Dudas, Civ. No. 05-1460 (D.D.C. Oct. 25, 2005) (“Decision”). Because the USPTO has statutory authority to so exclude Sheinbein based on his disbarment in other jurisdictions, and because the statute of limitations does not preclude Sheinbein’s exclusion, we affirm.

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Kemin Foods v. Pigmentos Vegetales

This litigation began when Kemin Foods, L.C., and The Catholic University of America filed a patent infringement suit against Pigmentos Vegetales del Centro S.A. de C.V. (“PIVEG”), alleging infringement of two patents. PIVEG counterclaimed, seeking a declaratory judgment that the two patents were invalid and unenforceable. PIVEG also filed counterclaims alleging unfair competition and antitrust violations. The unfair competition and antitrust counterclaims were severed from the remainder of the case, and the second case was stayed pending resolution of the patent issues.

Kemin Foods is the assignee of one of the two patents in suit, U.S. Patent No. 5,648,564 (“the ’564 patent”). The Catholic University of America owns the other patent, U.S. Patent No. 5,382,714 (“the ’714 patent”), and Kemin Foods is the exclusive licensee of that patent. (We refer to The Catholic University of America and Kemin Foods collectively as “Kemin.”) The patents in suit include process and product claims pertaining to purified lutein that is extracted from plants. Lutein is a carotenoid (i.e., an organic, naturally occurring pigment) that Kemin and PIVEG incorporate in dietary health supplements that they manufacture and distribute.

At trial, Kemin argued that PIVEG infringed product claims 1, 2, and 4 of the ’714 patent and process claim 1 of the ’564 patent. Kemin also intended to pursue an allegation of infringement of process claim 5 of the ’714 patent, but was effectively precluded from doing so by a pretrial order striking a supplemental expert report proffered by Kemin.

At the end of the trial, the jury found that the asserted claims were not invalid. The jury also found that the asserted claims of the ’714 patent were not infringed, but that claim 1 of the ’564 patent was infringed under the doctrine of equivalents. The jury awarded Kemin $58,775 in damages. The district court denied the parties’ respective motions for judgment as a matter of law, upheld the jury’s verdicts on validity and infringement, and enjoined PIVEG from infringing the ’564 patent. The court also rejected PIVEG’s claim that both patents were unenforceable because of inequitable conduct. With respect to the ’564 patent, the court concluded that Kemin did not withhold any material reference or intend to deceive the Patent and Trademark Office (“PTO”). With respect to the ’714 patent, the court concluded that the showings of materiality and deceptive intent with respect to a reference withheld during prosecution were not sufficient to render the patent unenforceable. Finally, the district court determined that Kemin was the prevailing party in the patent portion of this suit, and it granted Kemin’s request for an award of costs.

In appeal No. 05-1479, PIVEG challenges the portions of the court’s judgment holding the ’714 patent nonobvious, holding both patents enforceable, and awarding costs to Kemin. On those issues, we affirm. In its cross-appeal, No. 05-1480, Kemin challenges the court’s judgment that the asserted claims of the ’714 patent were not infringed. We affirm that ruling. Kemin also challenges the court’s pretrial order striking Kemin’s supplemental expert report. On that issue, we vacate and remand for the district court to consider the supplemental expert report and Kemin’s claim of infringement of claim 5 of the ’714 patent. Finally, Kemin asks that we modify the permanent injunction issued by the district court. We decline to do so and thus affirm the court’s injunctive order.

Also before the court is PIVEG’s separate appeal, No. 06-1002, from a decision in the severed portion of the litigation in which the court dismissed PIVEG’s unfair competition and antitrust counterclaims and denied PIVEG leave to amend and supplement those counterclaims. On that appeal, we affirm.

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