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In re Comiskey

Acting en banc, the court today vacated the September 20, 2007, judgment in this case, and the panel’s original opinion, which is reported at 499 F.3d 1365 (Fed. Cir. 2007), was withdrawn. The en banc court reassigned the opinion to the panel for revision. The panel’s original opinion is revised as follows:
Appellant Stephen W. Comiskey (“Comiskey”) appeals the decision of the Board of Patent Appeals and Interferences (“Board”) affirming the examiner’s rejection of claims 1-59 of his patent application as obvious in view of the prior art and therefore unpatentable under 35 U.S.C. § 103. We do not reach the Board’s obviousness rejection of the independent claims under § 103. We conclude that Comiskey’s independent claims 1 and 32 and most of their dependent claims are unpatentable subject matter under 35 U.S.C. § 101. With respect to independent claims 17 and 46 (and dependent claims 18-29, 31, 47-57, and 59) and dependent claims 15, 30, 44, and 58, we remand to the PTO to consider the § 101 question in the first instance. We therefore affirm-in-part, vacate-in-part, and remand.

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Kaiser Found. Health Plan Inc. v. Abbott Labs., Inc.

Plaintiff-Appellant Kaiser Foundation Health Plan, Inc. (“Kaiser”) sued Defendants-Appellees Abbott Laboratories (“Abbott”) and Geneva Pharmaceuticals (“Geneva”) for violations of the Sherman Antitrust Act and analogous provisions of California law. Kaiser brought a claim under Section One of the Sherman Act against both Abbott and Geneva, and a claim under Section Two against only Abbott. A multidistrict litigation federal district court in Florida allowed Kaiser’s Section One claim to go to trial. The suit was transferred to a federal district court in California for trial on that claim. The jury returned a verdict against Kaiser. The district court in Florida granted summary judgment against Kaiser on its Section Two claim.

We affirm the judgment entered on the jury’s verdict on Kaiser’s Section One claim. We reverse summary judgment on Kaiser’s Section Two claim and remand for further proceedings.

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MA Eye & Ear Infirmary v. QLT Phototherapeutics, Inc.

These appeals require us to grapple with the metes and bounds of Massachusetts unjust enrichment and restitution law. Like many such cases, the present case involves one party's conferral of a valuable benefit during ongoing contract negotiations, followed by an irreparable breach in the bargaining process. What makes this case unusual is that its subject matter -- the development of a blockbuster pharmaceutical -- poses challenges in valuing the benefit conferred, and potentially implicates federal patent law. Defendant QLT Phototherapeutics, Inc. ("QLT") appeals a jury finding that it was unjustly enriched because plaintiff Massachusetts Eye and Ear Infirmary ("MEEI") conferred on QLT several benefits during the course of the development of Visudyne, a successful (and highly profitable) treatment for age-related macular degeneration (“AMD”), a leading cause of adult blindness.

In a prior opinion, we concluded that MEEI was entitled to a trial on two theories supporting its unjust enrichment claim, as well as a misappropriation of trade secrets claim and claims arising under the Massachusetts Unfair Trade Practices statute, Mass. General Laws ch. 93A §§ 2, 11 (“Chapter 93A”). Mass. Eye & Ear Infirm. v. QLT Phototh., Inc., 412 F.3d 215 (1st Cir. 2005)("MEEI-II"). After trial, a jury found that QLT was unjustly enriched, and that it had committed unfair trade practices in violation of Chapter 93A. The jury awarded MEEI a running royalty of 3.01% of global net Visudyne sales as damages. QLT prosecutes its ensuing appeal with great vigor. For the sake of simplicity, we group QLT's assignments of error into five clusters relating to (1) the imposition of unjust enrichment liability, (2) the measure of unjust enrichment damages, (3) the unfair trade practices claim, (4) the conduct of the trial, and (5) the post-trial attorneys' fee award. MEEI has cross-appealed. This cross-appeal is largely protective; in all events, with two exceptions, we need not discuss the cross-appeal.

As to most of the grounds of MEEI's cross-appeal and QLT's appeal, including MEEI's claim that it is entitled to exemplary damages under Chapter 93A, we detect no error or infirmity in the proceedings below. The other issue raised in both the cross-appeal and QLT's appeal that bears discussion is the parties' query about the size of MEEI's attorneys' fee award. We are unable meaningfully to evaluate this claim of error, because the record is incomplete. We therefore affirm the district court judgment except for the fee award, which we vacate and remand to give the district court an opportunity to construct a more complete record.

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Walton v. US

A federal prisoner seeks to recover from the United States for copyright infringement involving the government’s use of calendars he created as part of his assigned duties in prison. We hold that 28 U.S.C. § 1498(b) (2008), the statute governing copyright infringement suits against the federal government, does not authorize his suit. We therefore affirm the judgment of the Court of Federal Claims that dismissed his complaint.

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Intervest Constr., Inc. v. Canterbury Estate Homes

In this copyright infringement action the appellant contends that the district court erred when it examined the two floor-plans at issue, and, emphasizing the differences between the two, concluded “that, as a matter of law, no reasonable fact-finder could conclude” that appellant’s floor-plan (“The Kensington”) was substantially similar to appellee’s floor-plan (“The Westminister”). More specifically, appellant (“Intervest”) argues that the district court employed a “heightened ‘substantial similarly’ standard” by itself focusing upon certain dissimilarities between the two floor-plans at issue, based upon 1 a misinterpretation of Howard v. Sterchi, 974 F.2d 1272 (11th Cir. 1992). For the reasons that follow we find no error and AFFIRM the judgment of the district court.

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Acumed LLC v. Stryker Corp.

Stryker Corporation, Stryker Sales Corporation, Stryker Orthopaedics, and Howmedica Osteonic Corporation (collectively, “Stryker”) appeal from the decision of the United States District Court for the District of Oregon granting Acumed LLC’s motion for a permanent injunction. Acumed LLC v. Stryker Corp., No. 04-CV-513-BR, 2007 U.S. Dist. LEXIS 86866 (D. Or. Nov. 20, 2007) (“Injunction Opinion”). Because we conclude that the district court did not abuse its discretion in granting the motion for a permanent injunction, we affirm.

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Sundance, Inc. v. Demonte Fabricating

Plaintiffs-Cross Appellants Sundance, Inc. and Merlot Tarpaulin and Sidekit Manufacturing Co., Inc. (collectively, Sundance) sued Defendants-Appellants DeMonte Fabricating Ltd. and Quick Draw Tarpaulin Systems, Inc. (collectively, DeMonte) in the United States District Court for the Eastern District of Michigan for infringement of claim 1 of U.S. Patent No. 5,026,109 (the ’109 patent). A jury concluded that claim 1 was infringed but invalid for obviousness under 35 U.S.C. § 103.
Following the jury verdict, Sundance moved for judgment as a matter of law (JMOL) that the ’109 patent was not invalid. The court granted Sundance’s motion, and denied DeMonte’s motion asking for reconsideration in light of KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007). DeMonte also moved for JMOL of noninfringement, which the court denied. DeMonte appeals both rulings. Sundance cross-appeals the district court’s denial of prejudgment interest for infringing sales made prior to the date it filed suit. For the reasons set forth below, we reverse the district court’s judgment that the asserted claims are nonobvious as a matter of law, thereby resolving all issues between the parties.

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Ricoh Co. v. Quanta Computer

This is a patent infringement case. Plaintiff-appellant Ricoh Company, Ltd. (“Ricoh”) appeals from a summary judgment dismissing all claims against defendant-appellees Quanta Computer Inc. (“QCI”), Quanta Storage, Inc. (“QSI”), Quanta Computer USA, Inc. (“QCA”), and NU Technology, Inc. (“NU”). On summary judgment, the district court ruled that the asserted claims of U.S. Patent No. 6,631,109 (“the ’109 patent”) are invalid for obviousness; that the accused devices do not practice the methods of the asserted claims of U.S. Patent No. 6,172,955 (“the ’955 patent”); and that Ricoh failed to present evidence sufficient to create a material issue of fact as to either direct or indirect infringement of U.S. Patent Nos. 5,063,552 (“the ’552 patent”) and 6,661,755 (“the ’755 patent”) by the defendant-appellees. Ricoh Co. v. Quanta Computer, Inc., 579 F. Supp. 2d 1110 (W.D. Wisc. 2007) (“Summary Judgment Order”). Because the district court applied erroneous legal standards for assessing (1) whether Quanta contributorily infringed the ’552 and ’755 patents and (2) whether QSI induced infringement of the ’552 and ’755 patents, the district court’s summary judgment of noninfringement is vacated on these issues. The remainder of the decision is affirmed in all respects.

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Hyatt v. Patent and Trademark Office

The Patent and Trademark Office (“PTO”) appeals a decision of the United States District Court for the District of Columbia in a consolidated case involving four civil actions brought by Gilbert P. Hyatt under 35 U.S.C. § 145 (2000). In his section 145 actions, Hyatt challenged decisions of the Board of Patent Appeals and Interferences (“Board”) that affirmed the rejections of all claims in twelve of his patent applications. The district court’s decision vacated the Board’s decisions and remanded Hyatt’s case to the Board for further consideration. The PTO raises two issues on appeal. The first issue is the extent to which 37 C.F.R. § 1.192(c)(7) (2000)1 allows the Board to affirm the rejections of groups of patent claims based upon its consideration of certain representative claims. In particular, the PTO challenges the district court’s holding that the Board misinterpreted the meaning of “ground of rejection” in section 1.192(c)(7) and, as a result, improperly selected certain claims to be representative of groups of claims that were rejected on different grounds. The second issue is whether the district court’s remand order requires the Board to consider arguments that Hyatt allegedly waived by failing to raise them before the Board in his initial appeals. Because we conclude, first, that the district court correctly interpreted section 1.192(c)(7) and, second, that the district court’s remand order does not require the Board to consider arguments waived by Hyatt, we affirm.

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Rentrop v. Spectranetics Corp.

Defendant-appellant The Spectranetics Corporation (“Spectranetics”) appeals from a final judgment of the district court awarding $500,000 to plaintiff-appellee Dr Peter Rentrop. The judgment was based on a jury’s verdict that found claim 1 of Rentrop’s United States Patent No 6,673,064 (“the ’064 patent”) not invalid and infringed. After trial, the district court considered and rejected Spectranetics’s defense of inequitable conduct, see Rentrop v Spectranetics Corp, 514 F Supp 2d 511 (SDNY 2007), and denied Spectranetics’s motion for judgment as a matter of law on infringement. See Rentrop v Spectranetics Corp, 514 F Supp 2d 497 (SDNY 2007). On appeal, Spectranetics challenges the lower court’s decisions on infringement and inequitable conduct and also argues that it is entitled as a matter of law to judgment of invalidity of claim 1 and other claims of the ’064 patent. For the reasons discussed below, we affirm the judgment of the district court.

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