Intellectual Property and Tech Law Reports

Praxair, Inc. v. ATMI, Inc.

Plaintiffs Praxair, Inc. and Praxair Technology, Inc. (collectively “Praxair”) brought suit alleging that defendants ATMI, Inc. and Advanced Technology Materials, Inc. (collectively “ATMI”) had infringed three patents: U.S. Patent No. 6,007,609 (the “’609 patent”); U.S. Patent No. 6,045,115 (the “’115 patent”), and U.S. Patent No. 5,937,895 (the “’895 patent”). The district court entered a final judgment concluding that claims 1, 2, 6, 7, and 8 of the ’609 patent and claims 18 and 20 of the ’115 patent were not invalid and were infringed; declaring the ’609 and ’115 patents unenforceable due to inequitable conduct; and declaring claims 1, 3, 4, 5, 7, and 8 of the ’895 patent invalid for indefiniteness. Praxair, Inc. v. ATMI, Inc., No. 03-1158-SLR (D. Del. July 2, 2007).

We affirm the district court’s determination that the ’115 patent is unenforceable due to inequitable conduct. We reverse the district court’s unenforceability conclusion with respect to the ’609 patent. We affirm the determination that the asserted claims of the ’609 patent were not proven invalid, vacate the determination of infringement with respect to the ’609 patent (because the district court used an incorrect claim construction), and remand for a determination as to infringement of the ’609 patent under the correct claim construction. We also reverse the district court’s judgment of invalidity for indefiniteness of the asserted claims of the ’895 patent and remand for further proceedings. As to Praxair’s appeal, we thus affirm-in-part, reverse-in-part, and remand. We dismiss ATMI’s cross-appeal as improper.

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USA V. ABLE TIME, INC.

We conclude that the Tariff Act does not contain an identity of goods or services requirement. We hold that Customs may impose a civil penalty pursuant to 19 U.S.C. § 1526(f) upon an importer of merchandise bearing a counterfeit mark, even though the owner of the registered mark does not manufacture or sell the same type of merchandise. We reverse the district court’s order granting Able Time’s motion for summary judgment and remand for further proceedings.

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BARBOZA V. NEW FORM, INC.

Lucia Munguia Albarran (“Albarran”) and her husband, Antonio Barboza (“Barboza”) (collectively “Appellants”), were found liable after a jury trial in District Court for willful infringement of New Form, Inc.’s (“Appellee”) copyright for certain Spanish language films. The District Court instructed the jury that “willful infringement” required a showing by a preponderance of the evidence that Appellants “knew that they were infringing the [Appellee’s] copyrights or that they acted with reckless disregard as to whether they were doing so.” After judgment was entered, Appellants filed for bankruptcy and sought to discharge the judgment award. The Bankruptcy Judge held on summary judgment that the judgment
award was nondischargeable under 11 U.S.C. § 523(a)(6) as a “willful and malicious injury” based upon the jury’s finding of willful infringement and uncontroverted evidence of Appellants’ knowledge of Appellee’s copyright interest.

The BAP affirmed and held that a statutory award of damages for willful copyright infringement is a debt for a “categorically harmful activity,” which is nondischargeable under § 523(a)(6) “if the Bankruptcy Court determines that the infringer had the requisite subjective intent to injure another’s property interest.” The BAP held that the uncontroverted evidence of knowledge of the creditor’s copyright interest at the time of infringement was proof of their “substantial certainty” of resultant harm.

We now REVERSE and REMAND for further consideration because: (1) there is a genuine issue of material fact as to whether the infringement was a “willful” injury within the meaning of § 523(a)(6) of the Bankruptcy Code; and (2) the “malicious” requirement was not addressed separately from the “willfulness” requirement as required by our precedent.

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Lucent Tech. Inc. v. Gateway Inc.

This case involves alleged infringement by Gateway, Inc. (“Gateway”), Microsoft Corporation (“Microsoft”), and Dell Inc. (“Dell”) of two patents owned by Lucent Technologies, Inc. (“Lucent”). After a jury verdict of infringement and a damages award of $1,538,056,702, the district court granted judgment as a matter of law (“JMOL”), and alternatively a new trial, on infringement and damages. Lucent Techs., Inc. v. Gateway, Inc., 509 F. Supp. 2d 912 (S.D. Cal. 2007) (“Lucent”). For the reasons set forth below, we affirm the court’s grant of JMOL based on lack of standing for one patent and based on non-infringement for the other patent. We need not decide the damages issues.

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Aritocrat Technologies Australia PTY Lmtd. v. International Game Tech.

The district court concluded that the U.S. Patent and Trademark Office “improperly revived” U.S. Patent No. 7,056,215 after it was abandoned during prosecution, and therefore held it (and the continuation patent that followed it) invalid on summary judgment. We conclude that “improper revival” is not a cognizable defense in an action involving the validity or infringement of a patent. Thus, we reverse the district court’s grant of summary judgment and remand for proceedings consistent with this opinion.

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Broadcom Corp. v. Qualcom Inc.

Qualcomm Incorporated (“Qualcomm”) appeals from a jury’s determination that Qualcomm infringed U.S. Patents No. 6,847,686 (“the ’686 patent”), No. 5,657,317 (“the ’317 patent”), and No. 6,389,010 (“the ’010 patent”), owned by Broadcom Corporation (“Broadcom”). Qualcomm also appeals from the district court’s issuance of a permanent injunction against Qualcomm. Because the district court erred in its construction of claim 3 of the ’686 patent, we reverse the jury’s determination of infringement of that patent and conclude that claim 3, as properly construed, is invalid. Because the district court did not err in construing the claims of the ’317 patent, and because substantial evidence supports the jury’s determinations of infringement and validity of the ’317 and ’010 patents, we affirm the judgment of infringement of the ’317 and ’010 patents, and the injunction as it pertains to those patents.

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Egyptian Goddess v. Swisa Inc.

This court granted rehearing en banc and asked the parties to address several questions, including whether the “point of novelty” test should continue to be used as a test for infringement of a design patent; whether the court should adopt the “non-trivial advance test” as a means of determining whether a particular design feature qualifies as a point of novelty; how the point of novelty test should be administered, particularly when numerous features of the design differ from certain prior art designs; and whether district courts should perform formal claim construction in design patent cases.

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Commonwealth Scientific and Industrial Research Org. v. Buffalo Tech. Inc.

On appeal, we affirm the district court’s summary judgment rulings in all but one respect. With respect to the issue of validity, we uphold the court’s entry of summary judgment that the ’069 patent was not anticipated. We also uphold the district court’s entry of summary judgment that the ’069 patent was not invalid because of the addition of new matter to the application or because the asserted claims lacked a sufficient written description in the original specification. With respect to the issue of obviousness, however, we conclude that the district court erred by entering summary judgment against Buffalo because we hold that there was a disputed issue of material fact as to whether the prior art references that were before the district court were combinable in a manner that would have rendered the asserted claims of the ’069 patent obvious. Although we vacate the summary judgment of obviousness, we have nonetheless addressed the issue of infringement, on which the district court entered summary judgment against Buffalo, because that issue will continue to be important to the ultimate disposition of the case unless the claims are held to be invalid for obviousness. As to that issue, we uphold the district court’s summary judgment of infringement.

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Broadcom Corp. v. International Trade Commission

This appeal arises out of an investigation by the International Trade Commission under section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337. Broadcom Corporation filed a petition with the Commission alleging that Qualcomm Incorporated had imported chipsets that infringed five of Broadcom’s patents in violation of section 337: U.S. Patent No. 5,682,379 (the ’379 patent), U.S. Patent No. 6,359,872 (the ’872 patent), U.S. Patent No. 6,374,311 (the ’311 patent), U.S. Patent No. 6,583,675 (the ’675 patent), and U.S. Patent No. 6,714,983 (the ’983 patent). The administrative law judge dismissed the claims that were based on the ’379 and ’872 patents after the United States District Court for the Southern District of California ruled that a forum selection clause required those patents to be litigated in California.
Following a hearing, the administrative law judge found that Qualcomm had violated section 337 by inducing infringement of the ’983 patent. Based on that determination, the Commission ultimately issued an exclusion order barring the importation of devices containing Qualcomm’s baseband processor chips. After the President declined review, Qualcomm and a number of handset device manufacturers and service providers appealed the Commission’s order. Those appeals were consolidated in Kyocera Wireless Corp. v. International Trade Commission, Nos. 2007-1493 et seq., which is now pending before this court.

With respect to the ’311 and ’675 patents, however, the administrative law judge found no violation of section 337, ruling that Qualcomm’s chipsets did not infringe the claims of those two patents. After the Commission adopted the administrative law judge’s noninfringement determinations, Broadcom filed this appeal. We affirm the Commission’s noninfringement determination as to the ’311 patent, but we vacate the noninfringement determination as to the ’675 patent in part, and we remand for further proceedings.

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The Campbell Pet Co. v. Miale

In this appeal concerning in personam jurisdiction, we are asked to decide whether the presence of the defendant patent owner in the State of Washington and her activities there relating to the enforcement of her patents are sufficient to allow a federal district court in that state to exercise in personam jurisdiction over the defendants, a California corporation and a California resident. The district court held that the patent owner’s activities were not sufficient to allow it to exercise in personam jurisdiction over the defendants. We disagree, and we therefore reverse the dismissal of the complaint.

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