Intellectual Property and Tech Law Reports

KSR INTERNATIONAL CO. v. TELEFLEX INC.

Held: The Federal Circuit addressed the obviousness question in a narrow, rigid manner that is inconsistent with §103 and this Court’s precedents. KSR provided convincing evidence that mounting anavailable sensor on a fixed pivot point of the Asano pedal was a design step well within the grasp of a person of ordinary skill in therelevant art and that the benefit of doing so would be obvious. Its arguments, and the record, demonstrate that the Engelgau patent’s claim 4 is obvious.

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MICROSOFT CORP. v. AT&T CORP.

Held: Because Microsoft does not export from the United States the copies of Windows installed on the foreign-made computers in question, Microsoft does not “suppl[y] . . . from the United States” “components” of those computers, and therefore is not liable under §271(f)as currently written.

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Court modifies for invalidating patents

Associated Press

Article Launched: 04/30/2007 08:24:51 AM PDT

 

WASHINGTON - The Supreme Court on Monday scaled back a controversial legal test that has made it difficult to challenge patents on new products.

In a unanimous ruling, the justices said a federal appeals court had gone too far in embracing a standard that has fueled an era of patent protection.

The court said a federal appeals court applied the test in a manner that is too narrow and too rigid.

The case addresses one of the most basic issues in patent law: How to determine whether a product is obvious and therefore not worthy of a patent.

In the case of KSR International Co. v. Teleflex Inc., the U.S. Court of Appeals for the Federal Circuit upheld a patent for adjustable gas pedals. That court in Washington, D.C., hears all appeals in the field of patents.

The legal test at issue in the Teleflex lawsuit has been criticized by the Bush administration as leading to an unwarranted extension of patent protection to claimed inventions that are obvious. Critics of the test say it results in less competition and stifles innovation. Proponents warned that throwing out the standard would upset decades of settled law.

To invalidate a patent, a challenger must show that all parts of a claimed invention were known previously. In addition, the challenger must show that there is a prior "teaching, suggestion or motivation" to combine these prior technologies to produce the invention.

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Supreme Court favors Microsoft in AT&T case

The 7-to-1 ruling changes how the software industry looks at patent rights
By Jeremy Kirk, IDG News Service
April 30, 2007

The U.S. Supreme Court ruled on Monday that Microsoft is not liable for using patented AT&T technology in copies of Windows running on computers outside the U.S.

The 7-to-1 ruling relieves the software giant from paying what could have been enormous damages and changes how the software industry looks at patent rights.

Microsoft has previously admitted to violating an AT&T patent for converting speech to computer code, which it incorporated into tens of millions of copies of its Windows OS. It settled with AT&T in the U.S., but disputed that Windows software running on machines located overseas were covered by the patent.

At issue was part of a 1984 patent law, Section 271F, which prevents companies from shipping parts overseas to be assembled in a fashion that would infringe on a U.S. patent.

Microsoft argued in front of the court in February that the master copies of Windows it ships overseas to other manufacturers are blueprints that do not violate patent laws.

AT&T, which filed the original case in federal court in New York in 2001, countered that Microsoft used the code in combination with other components in order to reap royalties from every copy of Windows sold.

In delivering the court's opinion, Justice Ruth Bader Ginsburg wrote that the "master disk" or "electronic transmission" Microsoft gives to foreign manufacturers does not violate the patent on its own since that specific copy is not used on foreign-made computers.

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Pods, Inc. v. Porta Stor, Inc.

Appellant Porta Stor, Inc. (“Porta Stor”) appeals a judgment in favor of appellee PODS, Inc. (“PODS”) for, among other things, patent and copyright infringement. We conclude that the district court erred in its patent claim construction; that no literal infringement occurred under the correct construction; and that infringement under the doctrine of equivalents is barred by prosecution history estoppel. Therefore, we reverse the judgment of patent infringement. In addition, since we hold that a reasonable jury could have concluded that PODS did not own the asserted copyright, we reverse the district court’s grant of judgment as a matter of law on copyright infringement and remand for a new trial on this issue. In other respects, we affirm.

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In re Omeprazole Patent Litig.

Astra Aktiebolag, Aktiebolaget Hässle, Astra Merck Enterprises Inc., Astra Merck Inc., KBI-E Inc., KBI Inc., Astra Pharmaceuticals L.P., and AstraZeneca L.P. (collectively Astra) filed patent infringement suits against several pharmaceutical companies that were seeking permission from the Food and Drug Administration (FDA) to market generic versions of Prilosec®, Astra’s gastric acid inhibiting drug. The United States District Court for the Southern District of New York tried the case in four phases. Following a fifty-two day bench trial, the district court decided in Phases I and III that Andrx’s product infringes two of Astra’s patents, U.S. Patent Nos. 4,786,505 (the ’505 patent) and 4,853,230 (the ’230 patent). Astra Aktiebolag v. Andrx Pharm., Inc., 222 F. Supp. 2d 423 (S.D.N.Y. 2002). This court affirmed that judgment. In re Omeprazole Patent Litig., 84 Fed. App'x. 76, 2003 WL 22928641 (Fed. Cir. 2003) (Omeprazole II).

This appeal involves Phases II and IV of the same litigation. The district court entered a final judgment finding that Andrx Pharmaceuticals, Inc. (Andrx) literally infringed claims 1, 2, 3, 7, 9, 16, and 20-21 of Astra Aktiebolag’s United States Patent No. 6,013,281 (the ’281 patent). The trial court also entered several other judgments about the enforceability of that patent and other Astra patents. In re Omeprazole Patent Litig., M-21-81 (BSJ), MDL Docket No. 1291 (S.D.N.Y. July 15, 2004) (Final Judgment). At the same time, however, the district court also found the asserted claims of Astra’s ’281 patent anticipated or obvious. Final Judgment, slip op. at 2. Detecting no error of law or fact, this court affirms.

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Vax-D Med.Techs., LLC v. Texas Spine Med. Ctr

This appeal arises from a final judgment of the District Court for the Middle District of Florida dismissing the claims of Plaintiff-Appellant Vax-D Medical Technologies, LLC (“Vax-D”), against Defendant-Appellees Texas Spine Medical Center (“Texas Spine”) and Daniel Boudreau (“Boudreau”) for lack of personal jurisdiction. Because the district court erred in its dismissal, the Court reverses the dismissal and remands the case for further proceedings.

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Triple Tee Golf, Inc. v. Nike, Inc.

Plaintiff-Appellant, Triple Tee Golf, Inc. (“TTG”) sued Defendants-Appellees (“Defendants”), Nike, Inc. (“Nike”) and Tom Stites & Associates, Inc. d/b/a Impact Golf Technologies (“IGT”) for misappropriation of trade secrets, negligent misrepresentation, breach of confidentiality, breach of implied contract, and deceptive trade practices. During discovery, the district court limited TTG’s proofs on all of its claims to evidence related to the use of TTG’s trade secrets in two specific Nike golf clubs, the CPR Woods and the Slingshot irons (collectively, the “accused clubs”). After discovery was completed, Defendants moved forsummary judgment, contending that (1) TTG’s trade secrets describe a system for weighting golf clubs that is adjustable by the user of the clubs, and (2) the accused Nike clubs are not “adjustable” at all. The district court, having determined that all of TTG’s claims turned on the unlawful use of trade secrets, granted Defendants’ motion and dismissed TTG’s suit in its entirety. After the judgment was entered, TTG became aware of two patent applications previously filed by Nike, describing golf clubs that are adjustable by the user of the clubs. Based on Defendants’ failure to disclose these patent applications in response to TTG’s discovery requests, TTG moved for relief from the earlier judgment.

The district court denied this motion, stating that the patent applications were not relevant to the legal issues that it had decided. TTG now appeals the district court’s limiting evidentiary order, grant of summary judgment, and denial of post-judgment relief.

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Intamin, Ltd. v. Magnetar Techs., Corp.

On summary judgment, the United States District Court for the Central District of California ruled that Magnetar Technologies, Corp. (Magnetar) does not infringe Intamin, Ltd.'s (Intamin's) U.S. Patent No. 6,062,350 (the '350 patent). Intamin appeals that ruling. Magnetar appeals the district court's order vacating a previous award of Rule 11 sanctions. Upon consideration of the claim terms on appeal, this court vacates part of the district court's claim construction and remands. This court also affirms the district court's decision to vacate the Rule 11 sanctions.

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Troll Co. v. Uneeda Doll Co.

Appeal from the November 28, 2005, Order of the United States District Court for the Southern District of New York (Richard Owen, District Judge), granting a preliminary injunction against Defendant for infringing a copyright restored pursuant to section 104A of the Copyright Act, 17 U.S.C. § 104A.

Affirmed.

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