Intellectual Property and Tech Law Reports

Abbott Laboratories v. Sandoz

This appeal is from the grant of a preliminary injunction, pending final resolution of the several challenges raised by Sandoz, Inc. to the validity, enforceability, and infringement of the Abbott Laboratories patents in suit.1 We conclude that abuse of discretion has not been shown in the district court's decision to grant the injunction pendente lite. That decision is affirmed.

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Net Moneyin Inc. v. Verisign, Inc.

Net MoneyIN, Inc. (“NMI”) appeals from a final judgment of the United States District Court for the District of Arizona, which held the asserted claims of U.S. Patents No. 5,822,737 (“the ’737 patent”) and No. 5,963,917 (“the ’917 patent”) invalid. NMI also appeals from the district court’s denial of its motion for leave to amend its complaint to assert a claim for inducement of infringement. Because the district court correctly found claims 1, 13, and 14 of the ’737 patent and claim 1 of the ’917 patent, which contain limitations in means-plus-function format, invalid under 35 U.S.C. § 112 ¶ 2 as lacking corresponding structure, we affirm that portion of the judgment. Because the district court did not abuse its discretion in denying NMI’s motion to amend, we also affirm that ruling. Because the district court applied an incorrect standard of law in finding claim 23 of the ’737 patent invalid as anticipated under 35 U.S.C. § 102(a), however, we reverse the grant of summary judgment of anticipation. Thus, we affirm-in-part, reverse-in-part, and remand for proceedings consistent with this opinion.

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Minks v. Polaris Industries

This is a patent infringement case. Floyd M. Minks (“Minks”) appeals from a final judgment that Polaris Industries (“Polaris”) willfully infringed claim 2 of U.S. Patent No. 4,664,080 (“the ’080 patent”).1 After a jury trial, the district court reduced the jury’s damages award from $1,294,620.91 to $55,809.60 (after doubling) and awarded attorney fees of $117,316.50, about half the requested amount. Minks appeals the reduction in damages, as well as the amount of attorney fees awarded. He also asserts on appeal that the jury instruction as to the date Polaris received actual notice of the alleged infringement was erroneous. Polaris cross-appeals from the district court’s denial of its motion for judgment as a matter of law (“JMOL”) on noninfringement and from the jury’s finding of willfulness. Because the district court reduced the jury’s compensatory damages award without offering Minks a new trial, and because the court’s instruction on actual notice failed to apprise the jury of the proper legal standard, he is entitled to a new trial on damages. Conversely, we affirm the award of attorney fees, but we note that the trial judge may exercise his discretion to modify the award if it warrants further consideration on remand. Additionally, because the jury’s finding of infringement is supported by substantial evidence, we affirm the district court’s denial of Polaris’ JMOL motion. We also affirm the jury’s finding of willful infringement because Polaris has failed to establish plain error in the willfulness instruction to the jury.

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In Re Ciprofloxacin Hydrochloride Antitrust Litigation

This case under the Hatch-Waxman Act presents the issue of whether a settlement agreement between a patent holder and a generic manufacturer violates the antitrust laws. The agreements here involve a reverse payment from the patent holder to the generic manufacturer, but do not implicate the 180-day exclusivity period. Indirect purchasers of Cipro and several advocacy groups (“appellants”) appeal the grant of summary judgment of their federal antitrust claims and dismissal of their state antitrust claims against the patent holders and brand-name manufacturers, Bayer AG and Bayer Corp. (collectively “Bayer”), and the generic manufacturers, Barr Labs., Inc. (“Barr”), Hoechst Marion Roussel, Inc. (“HMR”), The Rugby Group, Inc. (“Rugby”), and Watson Pharmaceuticals, Inc. (“Watson”) (collectively “generic defendants”). The United States District Court for the Eastern District of New York granted Bayer’s and the generic defendants’ motion for summary judgment, holding that any anti-competitive effects caused by the settlement agreements between Bayer and the generic defendants were within the exclusionary zone of the patent, and thus could not be redressed by federal antitrust law. In re Ciprofloxacin Hydrochloride Antitrust Litigation, 363 F. Supp. 2d 514 (E.D.N.Y. 2005) (“Cipro II”). The court further granted Bayer’s motion to dismiss the state antitrust claims. For the reasons set forth below, we affirm.

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Kyocera Wireless Corp. v. ITC

The United States International Trade Commission (“ITC” or “Commission”) determined that Qualcomm Incorporated (“Qualcomm”) infringed Broadcom Corporation’s (“Broadcom’s”) United States Patent 6,714,983 (“’983 Patent”) with its imports. As a remedy, the ITC issued a limited exclusion order (“LEO”) against the importation of all downstream products containing the accused technology. Aside from Qualcomm, the appellants in this action are Qualcomm’s customers. Some customers are wireless device manufacturers whose products are subject to the LEO. Others are wireless network operators whose networks depend on products subject to the LEO. Despite the broad downstream scope of the LEO, Broadcom named only Qualcomm as a respondent in its ITC complaint. Because the ITC correctly construed the critical disputed claim term in Broadcom’s patent, and because the ITC correctly rejected Qualcomm’s invalidity arguments under 35 U.S.C. §§ 102 and 103, this court affirms the ITC’s finding that the ’983 Patent is not invalid. This court also affirms the ITC’s determination of no direct infringement by Qualcomm. However, because the ITC misapplied the standard for induced infringement, this court vacates and remands on infringement. Finally, because the ITC has no statutory authority to issue an LEO against downstream products of non-respondents, this court vacates and remands the limited exclusion order.

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Tech. Licensing Corp. v. Videotek, Inc.

This is a patent case. It is not unusual for a patent case on appeal to turn more on a question of law or legal procedure than on the complexities of the particular technology that underlies the dispute. This is not such a case. This case has both legal issues and technical issues in roughly equal measure. There is, among other issues, a complex, though ultimately not difficult, question of allocation of the burdens of proof between the patentee and the alleged infringer when entitlement to an earlier filing date is at issue. And there is, among other issues, a complex, and rather difficult, question of whether the written description of the earlier application supports the later-claimed technology. As the reader will see, in the course of deciding the case the court had to parse the terms of the four applications that led to the two patents governing the particular aspect of video technology at issue.

After weighing carefully the findings and judgment of the trial court, which followed from a lengthy bench trial, and the arguments of counsel for the parties regarding the several issues in contention, we affirm the trial court’s judgment.

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Asyst Techs., Inc. v. Emtrak, Inc.

Asyst Technologies, Inc., is the assignee of U.S. Patent No. 5,097,421 (“the ’421 patent”), entitled “Intelligent Wafer Carrier.” The patent claims a system for tracking articles, such as silicon semiconductor wafers, in a manufacturing facility in which the wafers must be processed sequentially at a number of processing stations. The disclosed system includes transportable containers, or “pods,” which contain wafers that are to be transported between different manufacturing stations and allow the wafers to be maintained in a clean environment. The pods contain means for storing data regarding the status of the wafers in the pod, and the system features a means for transmitting data from the processing station to the pod and a means, located on the pod, for receiving data. The communication and storage means, which are connected to a central control unit, enable the system to detect the status of the wafers in each pod in the course of the manufacturing process, so that the proper fabricating steps can be followed in the proper order. ’421 patent, col. 1, ll. 46-54. See Asyst Techs., Inc. v. Emtrak, Inc., 268 F.3d 1364, 1366 (Fed. Cir. 2001) (“Asyst I”).

Asyst sued Jenoptik AG and other parties (collectively, “Jenoptik”) in the United States District Court for the Northern District of California, charging Jenoptik with infringing the ’421 patent and another Asyst-owned patent, U.S. Patent No. 4,974,166 (“the ’166 patent”). The trial court first granted summary judgment of no infringement as to three of the asserted claims because the accused device lacked a simple communication means; the court ruled that the other asserted independent claims were not infringed because the accused device lacked structure corresponding to the “means for sensing.” Asyst I, 268 F.3d at 1369. On the first appeal, this court reversed the grant of summary judgment, holding that the trial court had erred in its claim construction. Asyst I, 268 F.3d at 1370-71, 1373, 1374.

On remand, the district court again granted summary judgment of non-infringement as to the claims of the ’421 patent and dismissed the claims of infringement of the ’166 patent pursuant to the parties’ agreement. Asyst Techs., Inc. v. Emtrak, Inc., 2003 U.S. Dist. LEXIS 26418 (N.D. Cal. Oct. 8, 2003). On appeal, this court affirmed the grant of summary judgment of no infringement of independent claim 1 of the ’421 patent but reversed and remanded with respect to independent claim 2 and dependent claims 11-14. Asyst Techs., Inc. v. Emtrak, Inc., 402 F.3d 1188, 1189 (Fed. Cir. 2005) (“Asyst II”).

On the second remand, the court ruled on summary judgment that claims 2 and 11-14 of the ’421 patent are invalid for double patenting over claim 8 of the ’166 patent. After Asyst filed a terminal disclaimer to overcome the double patenting problem, the case proceeded to trial. At the end of trial, the jury found claims 2 and 11-14 of the ’421 patent valid and infringed. Jenoptik then moved for judgment as a matter of law (“JMOL”) that the asserted claims were invalid due to obviousness, or alternatively for a new trial. After initial briefing on the JMOL motion, the Supreme Court decided KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007), and the trial court thereafter allowed additional briefing based on that decision. The trial court then granted JMOL of obviousness, in view of U.S. Patent No. 4,588,880 to Hesser, based in part on KSR. The trial court also conditionally granted a new trial in the event that we should reverse the grant of JMOL.

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Predicate Logic, Inc. v. Distributive Software, Inc.

When the complexities inherent in the English language meet the peculiarities of patent jargon, the result can be the bane of many unsuspecting patentees. While claim language is generally the product of the patentee alone, the patentee’s drafting efforts are sometimes aided by the examiner. Usually, such collaborative efforts are constructive. On occasion, however, these efforts result in confusion, not clarity. In this case, there were two such occasions. The first was during the original prosecution—when the patentee authored and the examiner allowed a claim with an arguably ambiguous limitation. The second was during reexamination—when the patentee and the examiner clarified the claim but failed to make an adequate record explaining the rationale for the amendment. Careful and straightforward claim drafting by prosecuting attorneys and agents, and rigorous application by examiners of the statutory standard to particularly point out and distinctly claim the subject matter regarded to be the invention, see 35 U.S.C. § 112, ¶ 2 (2000), serve an important public notice function. Here, the public notice function was not well served. Indeed, the controversy in this case might have been avoided had the claims been presented differently and accepted by the examiner only after more careful scrutiny.

In this action, Predicate Logic, Inc. (“Predicate”) brought suit against Distributive Software, Inc. (“Distributive”) for infringement of U.S. Patent No. 5,930,798 (the “’798 patent”). The ’798 patent relates to measurement and analysis technologies for use in software development. During the litigation, Distributive requested ex parte reexamination of the ’798 patent, and the claims were allowed as amended during reexamination. Distributive then argued to the district court that the asserted claims were invalid because the amendment during reexamination improperly broadened the claims. The district court agreed and granted Distributive’s motion for summary judgment of invalidity. Predicate Logic, Inc. v. Distributive Software, LLC, No. 01-CV-1951, slip op. at 17 (S.D. Cal. Jan. 25, 2007) (“Jan. 25 Op.”); Predicate Logic, Inc. v. Distributive Software, LLC, No. 01-CV-1951, slip op. at 7-8 (S.D. Cal. July 12, 2007) slip op. at 7-8 (“July 12 Op.”). Because we disagree with the district court’s conclusion that the amendment substantively changed the scope of claim 1 of the ’798 patent, we reverse and remand.

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Cohesive Techs., Inc. v. Waters Corp.

This is a patent infringement case. Cohesive Technologies, Inc. (“Cohesive”) brought three related actions accusing Waters Corporation (“Waters”) of infringing U.S. Patent No. 5,772,874 (the “’874 patent”) and U.S. Patent No. 5,919,368 (the “’368 patent”). In the first action, No. 98-CV-12308, Cohesive accused Waters’s 30 μm Oasis high-performance liquid chromatography (“HPLC”) columns (the “30 μm columns”) of infringing the ’874 patent. See Cohesive Techs., Inc. v. Waters Corp., 526 F. Supp. 2d 84, 88 (D. Mass. 2007). In the second action, No. 99-CV-11528, Cohesive accused the same 30 μm columns of infringing the ’368 patent. See id. In the third action, No. 01-CV-12307, Cohesive accused Waters’s 25 μm Oasis HPLC columns (the “25 μm columns”) of infringing both patents. See id.

A jury in the first action found that the ’874 patent was not invalid, and that the 30 μm columns infringed the ’874 patent. See id. The district court then held a combined bench trial and hearing on damages, willful infringement, and inequitable conduct in the first action, and on preliminary injunction and summary judgment motions in the second and third actions. The district court entered judgment in favor of Cohesive in the first action, granted Cohesive’s motion for summary judgment of infringement and no invalidity in the second action, and awarded damages. Id. at 126. However, in the third action, the district court granted Waters’s motion for summary judgment of noninfringement, concluding that the 25 μm products did not infringe either patent. Id. Both parties appeal numerous aspects of the judgment.

As to the 30 μm products, we conclude that the district court correctly construed the term “rigid” and properly denied Waters’s motion for judgment of noninfringement as a matter of law. We further conclude that the district court committed no clear error in concluding that Waters failed to prove the deceptive intent necessary to sustain its claim of inequitable conduct. However, we agree with Waters that the district court was wrong to enter judgment as a matter of law on anticipation without submitting the issue to the jury.

As to the 25 μm products, we disagree with the district court’s construction of “greater than about 30 μm.” Under the correct construction, Waters was not entitled to summary judgment of no literal infringement. The district court was, however, correct to grant Waters’s motion for summary judgment of no infringement under the doctrine of equivalents, though not for the reasons that the district court articulated.

As to damages, because the district court incorrectly considered the 25 μm product as an acceptable noninfringing substitute, and because it is unclear whether the other available product, standing alone, would have been an acceptable substitute, we vacate the district court’s judgment that Cohesive was not entitled to lost profits and remand for reconsideration by the district court in the first instance. We find no clear error in the district court’s conclusion that Waters’s infringement was not willful. Finally, we decline Cohesive’s request to assign this matter to a different district court judge on remand.

Accordingly, we affirm-in-part, reverse-in-part, vacate-in-part, and remand.

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Impax Labs., Inc. v. Aventis Pharm. Inc.

The United States District Court for the District of Delaware held that United States Patent No. 5,236,940 (the ’940 patent) does not qualify as an enabling prior art reference and thus does not anticipate claims 1-5 of U.S. Patent No. 5,527,814 (the ’814 patent). Because the trial court correctly determined that the ’940 patent is not an enabling prior art reference and that it therefore does not anticipate claims 1-5 of the ’814 patent, this court affirms.

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