Intellectual Property and Tech Law Reports

O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd.

Defendants-Appellants Beyond Innovation Technology Company Limited (“BiTEK”), SPI Electronic Company Limited and FSP Group (collectively, “SPI/FSP”), and Lien Chang Electronic Enterprise Company Limited (“Lien Chang”) appeal a final judgment by the United States District Court for the Eastern District of Texas. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., No. 2:04-CV-32 (E.D. Tex. Mar. 21, 2007). A jury found that Defendants-Appellants willfully induced the infringement of claims 1, 15, 35, and 39 of U.S. Patent No. 6,259,615 (“the ’615 patent”), claims 12 and 16 of U.S. Patent No. 6,396,722 (“the ’722 patent”), and claims 13, 16, and 17 of U.S. Patent No. 6,804,129 (“the ’129 patent”), all of which are owned by Plaintiff-Appellee O2 Micro International Ltd. (“O2 Micro”). The district court entered a final judgment and permanent injunction. For the reasons explained below, we vacate and remand for further proceedings.

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Microprocessor Enhancement Corp. v. Texas Instruments Inc.

This is a patent infringement case. Microprocessor Enhancement Corporation and Michael H. Branigin (collectively “MEC”) appeal the judgments of the United States District Court for the Central District of California, Docket Nos. 05-CV-00323 and 05-CV-05667, wherein the district court found on summary judgment that Texas Instruments Incorporated (“TI”) and Intel Corporation (“Intel”) did not infringe any claim of U.S. Patent No. 5,471,593 (“the ’593 patent”) owned by MEC and that all claims of the patent are invalid for indefiniteness. Because the district court erroneously concluded that the claims are indefinite, we reverse the court’s finding of invalidity. Because the district court correctly construed the term “pipeline stage,” we affirm the court’s judgment of noninfringement.

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Caraco Pharm. Labs., Ltd. v. Forest Labs., Inc.

This is an action brought under the Declaratory Judgment Act, 28 U.S.C. §§ 2201, 2202, and the provision of the Hatch-Waxman Act establishing civil actions for patent certainty, 21 U.S.C. § 355(j)(5)(C). Plaintiff-Appellant Caraco Pharmaceutical Laboratories, Ltd. (“Caraco”) appeals a decision of the United States District Court for the Eastern District of Michigan dismissing its declaratory judgment action for noninfringement against Defendants-Appellees Forest Laboratories, Inc., et al., (“Forest”). Caraco’s action was dismissed for lack of Article III jurisdiction on the grounds that it had been rendered moot when Forest unilaterally granted Caraco a covenant not to sue for infringement of the patent-in-suit, U.S. Patent No. 6,916,941. However, in the context of the Hatch-Waxman framework, Forest’s covenant not to sue did not eliminate the controversy between the parties. Accordingly, we hold that Caraco’s declaratory judgment action presents a continuing Article III controversy, and reverse and remand for further proceedings.

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Akira Akazawa v. Link New Tech. Int'l, Inc.

Akira Akazawa (“Akira”) and Palm Crest, Inc. (collectively “the appellants”) appeal the United States District Court for the Central District of California’s grant of Link New Technology International, Inc.’s (“Link”) motion for summary judgment based on lack of standing. Akira Akazawa v. Link New Tech. Int’l, No. SACV 03-1474 (C.D. Cal. Oct. 26, 2006). Because issues of Japanese intestacy law must be resolved by the district court in order to determine whether Akira owned U.S. Patent No. 5,615,716 (“the ’716 patent”), and therefore possessed standing to bring the present suit, we vacate the district court’s grant of summary judgment and remand for further proceedings.

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Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.

The United States District Court for the District of New Jersey permanently enjoined Mylan Laboratories, Inc. from infringing Ortho-McNeil Pharmaceutical Inc.'s U.S. Patent No. 4,513,006 ('006). The '006 patent claims the anticonvulsive drug topiramate. The trial court also reset the effective approval date for Mylan's Abbreviated New Drug Application (ANDA). Because the district court correctly ruled on claim construction, inequitable conduct, obviousness, and enablement, and because the district court did not err in resetting the effective date of Mylan's ANDA under 35 U.S.C. § 271(e)(4)(A), this court affirms.

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Aristocrat Techs. Australia Pty, Ltd. v. Int'l Game Tech.

The appellants, referred to collectively as “Aristocrat,” are the owner and exclusive licensee of U.S. Patent No. 6,093,102 (“the ’102 patent”). The patent is directed to an electronic slot machine that allows a player to select winning combinations of symbol positions. The appellees, referred to collectively as “IGT,” manufacture and sell gaming products that Aristocrat asserts infringe the ’102 patent. In an infringement action brought by Aristocrat against IGT in the United States District Court for the District of Nevada, the district court held all of the claims of the ’102 patent invalid for indefiniteness.

The game disclosed in the ’102 patent purportedly increases player interest in slot machines by providing the player with greater control over the definition of winning opportunities. It allows the player to define the winning opportunities based on symbols displayed on the top and side of a multi-line screen representing slot machine reels. Using the invention on a 3x5 screen, for example, the player can define numerous different arrangements that will allow the player to win for some subset of the 243 possible winning combinations. The player can do so by selecting symbol positions and thereby activating winning opportunities for combinations in which the symbols are not necessarily aligned with one another. The only constraint is that the selected combination must contain at least one symbol from each column. Figure 2 from the ’102 patent shows a 3x5 screen with selections, and the figure on the right shows one of the winning combinations for the selection in Figure 2.

On summary judgment, the trial court held all of the claims of the ’102 patent invalid. Aristocrat does not dispute that all of the claims rise and fall together. Like the parties, we therefore focus on independent claim 1.

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Agrizap, Inc. v. Woodstream Corp.

Agrizap, Inc. has sued Woodstream Corporation in the United States District Court for the Eastern District of Pennsylvania for fraudulent misrepresentation and infringement of U.S. Patent No. 5,949,636 (the ’636 patent), which pertains to an electronic rodent-killing device. Woodstream appeals the district court’s denial of its motion for judgment as a matter of law (JMOL) for no fraudulent misrepresentation. Woodstream also appeals the denial of its JMOL motion for invalidity and unenforceability. Agrizap cross-appeals the district court’s final judgment of noninfringement.

Because sufficient evidence supports the jury’s verdict finding Woodstream liable for fraudulent misrepresentation and the trial evidence provides a reasonable basis for the jury’s attendant award of damages, we affirm. Though we defer to the jury for its fact findings on obviousness, we ultimately conclude that, despite those findings, the patent claims in dispute are invalid for obviousness and thus reverse the district court’s denial of Woodstream’s JMOL in that respect. As our decision on those issues completely resolves this case, we decline to address the other arguments as to patent infringement, invalidity, or unenforceability.

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Computer Docking Station Corp. v. Dell, Inc.

On summary judgment, the United States District Court for the Western District of Wisconsin determined that Dell, Inc., Gateway, Inc., Toshiba America, Inc., and Toshiba America Information Systems, Inc. (collectively Defendants) did not infringe claims 17-20, 22, 24, and 26-28 of Computer Docking Station Corporation’s (CDSC’s) United States Patent No. 5,187,645 (’645 patent). Computer Docking Station Corp. v. Dell, Inc., Case No. 06-C-0032-C, 2007 U.S. Dist. LEXIS 2419 (W.D. Wis. Jan. 10, 2007) (Summary Judgment Order). Because the patentee disavowed an interpretation of “portable computer” that would encompass a computer with a built-in display or keyboard, this court affirms the district court’s holding of no infringement. This court also affirms the district court’s finding that the case was not exceptional and that attorney fees were not warranted under 35 U.S.C. § 285.

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Amgen, Inc. v. Int'l Trade Comm'n

By complaint to the International Trade Commission under Section 337 of the Tariff Act of 1930 as amended, 19 U.S.C. '1337, Amgen, Inc. charged that certain importations of recombinant human erythropoietin and derivatives thereof (collectively "EPO") are in violation of Section 337. Amgen charged that the imported EPO and the process by which it is produced in Europe are covered by one or more claims of the following Amgen United States patents: Patent No. 5,411,868 (claims 1 and 2); Patent No. 5,547,933 (claims 3, 4, 5, and 11); Patent No. 5,618,698 (claims 4-9)1; Patent No. 5,621,080 (claims 4 and 6); Patent No. 5,756,349 (claim 7); and Patent No. 5,955,422 (claim 1). The Intervenors Roche Holding Ltd., F. Hoffmann-La Roche, Ltd., Roche Diagnostics GmbH, and Hoffmann-La Roche, Inc. (collectively "Roche") are producers and importers of the accused EPO.

Roche moved for summary determination of noninfringement as to all claims, on the ground that the imported EPO is exempt from infringement by operation of 35 U.S.C. '271(e)(1), the "safe harbor" statute, because the imported EPO is used only for the statutorily exempt purpose of the development and submission of information under a federal law regulating the manufacture, sale, and use of drugs. The Commission granted the motion for noninfringement, holding that all of Roche's activities are within the safe harbor, including the foreign production of the imported product. Amgen appeals this ruling, on the principal ground that the safe harbor statute does not apply to Tariff Act violations based on foreign practice of patented processes, and also on the ground that not all of the imported EPO was used for the statute's exempt purposes.

We affirm the Commission's ruling that the safe harbor provided by '271(e)(1) applies in proceedings under the Tariff Act relating to process patents as well as product patents, for imported product that is used for exempt purposes.

The Commission also ruled that it did not have jurisdiction to investigate and resolve the charges of infringement, reasoning that the product subject to the safe harbor had not been sold in the United States and was not the subject of an existing contract for sale, and ruling that sale as well as importation is required for Section 337 jurisdiction. Amgen appeals this ruling, arguing that Roche's announced imminent FDA approval of the imported EPO and the accompanying end of safe harbor protection, as well as Roche's extensive arrangements to sell in and to the United States market upon FDA approval, suffice to establish Commission jurisdiction. In this connection Amgen complains about the Commission's denial of discovery of Roche's marketing arrangements, thereby preventing Amgen from meeting the Commission's requirement of proving sale or contract for sale.
We reverse the Commission's ruling that it had no jurisdiction to determine violation of Section 337 in the posture of this case.

The Commission's statutory interpretations and rulings of law receive plenary review, applying the standards of the Administrative Procedure Act. See 19 U.S.C. '1337(c); 5 U.S.C. '706; e.g., Jazz Photo Corp. v. United States Int'l Trade Comm'n, 264 F.3d 1094, 1099 (Fed. Cir. 2001). Plenary review is given to the Commission's summary determinations, which are governed by the criteria of summary judgment and are reviewed accordingly. See 19 C.F.R. '210.18(b) (authorizing summary determination by the Commission if there is no genuine issue of material fact and the moving party is entitled to prevail as a matter of law); Hazani v. United States Int'l Trade Comm'n, 126 F.3d 1473, 1476 (Fed. Cir. 1997) (reviewing the Commission's summary determinations in accordance with the standards for summary judgment).

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Pfizer, Inc. v. Teva Pharms. USA, Inc.

Appellant Teva Pharmaceuticals USA, Inc. (“Teva”) appeals from a final judgment of the United States District Court for the District of New Jersey, entered after a bench trial, in favor of Appellees Pfizer, Inc. et al. (collectively “Pfizer”). Pfizer Inc. v. Teva Pharms. USA, Inc., 482 F. Supp. 2d 390 (D.N.J. 2007). The district court held that Teva infringed three patents owned by Pfizer: specifically, claims 1-3, 7-9, 11, and 13 of U.S. Patent No. 5,466,823 (“the ’823 patent”), claims 1-5 and 15-18 of U.S. Patent No. 5,563,165 (“the ’165 patent”), and claims 1-4 and 11-17 of U.S. Patent No. 5,760,068 (“the ’068 patent”). The district court also held that the asserted claims of the three patents were not invalid for a best mode violation and that the asserted claims of the ’068 patent were not invalid for obviousness-type double patenting. The district court held that none of the patents was unenforceable on grounds of inequitable conduct. We find that the asserted ’068 patent claims are invalid based on double patenting. However, we agree that claim 9 of the ’823 patent and claim 17 of the ’165 patent are not invalid for a best mode violation. The ’823, ’165 and ’068 patents also are not unenforceable for inequitable conduct. We therefore affirm-in-part and reverse-in-part.

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