04/06/2016

Written By: John Kirkpatrick

Wi-LAN sued Apple alleging infringement of U.S. Patent No. RE37,802 (the ’802 patent) concerning a wireless data communication technique.  The jury found no infringement and that the infringing claims were invalid as anticipated by prior art that disclosed a randomizer using real multipliers.  The district court denied Wi-LAN’s motion for judgment as a matter of law and for a new trial regarding infringement, but overruled the jury’s verdict regarding invalidity by ruling that the ’802 patent required complex multipliers.  Wi-LAN appealed the denial of JMOL and its motion for a new trial.  Apple appealed the district court’s ruling of validity.

11/10/2015

Written By: David Youngkin

Spectrum appealed the district court’s holding that U.S. Patent 6,500,829 (“the ‘829 patent’”) was invalid as obvious and that claims were not infringed by Sandoz’s Abbreviated New Drug Application (“ANDA”).  The Federal Circuit affirmed the district court’s holding that a substantially pure compound would have been obvious over both the 50/50 mixture and pure isomer.  Additionally the Federal Circuit affirmed the district court’s decision that held Spectrum could not rely on the doctrine of equivalents because of prosecution history estopple.
10/06/2015

IP Alert: Federal Circuit Upholds Expert Apportionment Methodology to Prove Reasonable Royalty Damages for Individual Features of Complex Technology

--Written by Fitch Even attorneys Steven C. Schroer and Christian C. Damon

On September 21, 2015, in Summit 6, LLC v. Samsung Electronics Company, Ltd., the Court of Appeals for the Federal Circuit added a new chapter to rapidly developing jurisprudence addressing the kinds of evidence admissible to prove the reasonable royalty value of patents drawn to individual features of a multi-element technology. Explaining its holding by reference to long-established Georgia-Pacific principles, the court upheld a jury verdict awarding a royalty based on opinions of a damages expert whose methodology rested on the premise that a “feature’s use is proportional to its value” and allocating infringing versus non-infringing use of the multi-element technology. The court affirmed the admission into evidence of the expert’s opinions based on usage surveys conducted by the infringer in the ordinary course of its business. In doing so, the Federal Circuit liberalized the admission of expert testimony that relies “on a methodology not previously used or published in peer-reviewed journals.” The court held that such opinions do not per se run afoul of guidelines established in Daubert v. Merrell Dow Pharmaceuticals. Finally, the Federal Circuit determined that based on the particular facts present and the manner the issue was presented at trial, a jury’s lump-sum damages award could compensate the patent owner for past and future damages and that a going-forward royalty was unnecessary.
04/07/2015

Category: Infringement 

  

By: Abby Lin, Contributor  

TitleAqua Shield v. Inter Pool Cover Team, No. 2014-1263 (Fed. Cir. Dec. 22, 2014).
Issues
[1] We deal here only with a challenge to the soundness of the district court’s particular use of IPC’s profits in its rationale.
Aqua, at *10.
[2] Aqua Shield appeals … the finding of no willfulness that led to the denial of enhanced damages and attorney's fees.
Id. at *2.
Holding
[1] Contrary to Aqua Shield’s broader contention, therefore, the district court did not err in considering IPC’s profits. But it did err in treating the profits IPC actually earned during the period of infringement as a royalty cap. That treatment incorrectly replaces the hypothetical inquiry into what the parties would have anticipated, looking forward when negotiating, with a backwardlooking inquiry into what turned out to have happened. See Interactive Pictures, 274 F.3d at 1385 (expectations govern, not actual results).
Id. at *10.
[2] [The district court improperly applied Seagate's two part terms for willfulness analysis by relying on EDNY's denial of Aqua Shield's motion for preliminary injunction based on personal jurisdiction and incomplete analysis on if IPC's design around was implemented. ] We therefore vacate the court’s decision that IPC did not willfully infringe and remand for an analysis that conforms to Seagate’s standard. 497 F.3d at 1371. We do not reach an ultimate conclusion ourselves. We observe, however, that Seagate’s first requirement focuses on whether the infringer’s defenses, as ultimately presented to the court, were reasonable. Bard, 682 F.3d at 1008. [...] we note that the objective baselessness of an infringer’s defenses, assessed on the litigation record, may have a strong bearing on whether the “objectively defined risk” of infringement “was either known or so obvious that it should have been known to the accused infringer.” Seagate, 497 F.3d at 1371 [...]
Id. at *14-15 (text added).

 

 

 

01/20/2015
Category: Infringement
 
 
 
By: Abby Lin, Contributor 
 
Case:Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 2013-1472, -1656 (Fed. Cir. Oct. 22, 2014).
Issues
1. “Halo argues that the district court erred in granting summary judgment of no direct infringement with respect to products that Pulse delivered abroad. Halo contends that those products were sold and offered for sale within the United States because negotiations and contracting activities occurred within the United States, which resulted in binding contracts that set specific terms for price and quantity. Halo argues that the location of the sale or offer for sale should not be limited to the location of delivery. Halo also argues that it suffered economic harm in the United States as a result of Pulse’s sales.”
Halo Electronics, at *8-9.
2. “Halo challenges [the district court’s holding that Pulse did not willfully infringement due to relying on its obviousness defense] mainly by arguing that Pulse did not actually rely on any invalidity defense pre-suit when selling the accused products because Pulse’s obviousness defense was developed after the lawsuit was filed in 2007. Halo also contends that after Pulse received Halo’s notice letters in 2002, the Pulse engineer only performed a cursory review of the Halo patents and Pulse did not rely on that analysis to assess whether it was infringing a valid patent. Halo asserts that the court erred in holding that the objective prong was not met simply because Pulse raised a non-frivolous obviousness defense.”
Id. at *17 (text added).
3. “Pulse cross-appeals from the judgment that the asserted claims of the Halo patents were not invalid for obviousness[based on the jury’s findings]”.
Id. at *19 (text added).
Holdings
1. “We agree with Pulse that the district court did not err in granting summary judgment of no direct infringement with respect to those products that Pulse manufactured, shipped, and delivered outside the United States because those products were neither sold nor offered for sale by Pulse within the United States. [Because the products were not sold/offered for sale within the U.S., Halo also did not suffer economic harm.]”
Id. at *9(text added).
2. “We agree with Pulse that the district court did not err in holding that the objective prong of the willfulness inquiry was not satisfied. “Seagate’s first prong is objective, and ‘[t]he state of mind of the accused infringer is not relevant to this objective inquiry.’” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1336 (Fed. Cir. 2009) (alteration in original) (quoting Seagate, 497 F.3d at 1371). The court properly considered the totality of the record evidence, including the obviousness defense that Pulse developed during the litigation, to determine whether there was an objectively-defined risk of infringement of a valid patent.”
Id. at *18.
3. “Pulse did not file a motion during trial under Fed. R. Civ. P. 50(a) on the issue of obviousness before that issue was submitted to the jury and thus waived its right to challenge the jury’s implicit factual findings underlying the nonobviousness general verdict. The district court thus correctly presumed that the jury resolved all factual disputes relating to the scope and content of the prior art and secondary considerations in Halo’s favor. Based upon those presumed factual findings, the court did not err in reaching the ultimate legal conclusion that the asserted claims were not invalid for obviousness.”
Id. at *19-20.
 
 
 
01/03/2015
Category: Infringement
 
 
 
By: Roy Rabindranath, Contributor 
 
TitleSSL Services, Inc. v. Citrix Systems, Inc. (Fed. Circ. October 14, 2014).
IssueSSL appeals the district court’s denial of a new trial on non-infringement of claim 27 of [U.S. Pat. 6,061,796], arguing that the district court erred in its claim construction of the terms “intercepting” and “destination address,” and in imposing a set step order requirement for the claim. SSL also appeals the district court’s finding that it was not the prevailing party in the litigation overall. Citrix cross-appeals the district court’s denial of JMOL [“judgment as a matter of law”] of no willful infringement and invalidity of claims 2, 4, and 7 of [U.S. Pat. 6,158,011]. Citrix further contends the district court’s award of prejudgment interest and asserts that certain of its evidentiary rulings justify a new trial on willful infringement and damages.
SSL Services, at *2-3 (text added).
HoldingsBased on the “destination address” limitation, we affirm the denial of a new trial on non-infringement of claim 27 of the ‘796 Patent. Furthermore, we affirm the district court’s denial of JMOL requesting a finding of no willful infringement and invalidity of the asserted claims of the ‘011 Patent. We also affirm the denial of a new trial based on the district court’s evidentiary rulings, and affirm the award of prejudgment interest. Finally, we vacate the district court’s denial of prevailing party status to SSL because we find that SSL is the prevailing party, and remand for an assessment of costs and fees.
Id. at *3.
 
 
12/30/2014
Category: Infringement 
 
 
 
By: Christian Hannon, Contributor  
 
TitleAzure Networks v. CSR, No. 2013-1459 (Fed. Cir. Nov. 6, 2014).
Issue
[Standing] [Did the District court properly grant] the Appellees' motion to dismiss Tri-County for lack of standing, finding that Tri-County had effectively assigned Azure the '129 patent.
Azure Networks at *3 (text added).
[Claim Construction] [Did the district court properly construe] the term "MAC address" in the '129 patent as "a device identifier gerenated by the hub device".
Id. (text added).
Holding
[Standing] We agree that the agreement between Tri-County and Azure constituted an effective assignement for purposes of standing, we affirm the dismissal of Tri-County.
Id.
[Claim Construction] The district court improperly construed the term ["MAC address"], we vacate the judgmenet of noninfringement and remand.
Id.
 
 
 
12/24/2014
Category: Infringement 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor   
 
TitleStryker Corp. v. Zimmer, Inc. No. 2013-1668 (Fed. Cir. Dec. 19, 2014).
Issue[Whether] [t]he district court failed to undertake an objective assessment of Zimmer’s specific defenses to Stryker’s claims [in determining willful infringement].
Stryker Corp. at *18 (text added).
Holding[Because Zimmer’s arguments were founded on reasonable interpretations of claim language that Stryker needed to directly rebut before the jury], we find that Zimmer’s defenses to the infringement of each patent claim that Stryker asserted were not objectively unreasonable, and, therefore, it did not act recklessly.
Id. at *19 (text added).
 
 
 
 
11/02/2014
Category: Infringement 
 
 
 
 By: Christian Hannon, Contributor  
 
TitleFerring B.V., v. Watson Labs., No. 2014-1416 (Fed. Cir. Aug. 22, 2014).
IssueThis appeal raises questions of validity and infrignement[.]
Ferring B.V. at *8.
HoldingWe conclude that the district court did not err in holiding that Watson failed to prove by clear and convincing evidence that the asserted claims are invalid as obvious [...] [and] conclude that the district court's finding that Watson's generic tranexamic acid product infringes Ferring's asserted claims was not in accordance with law and therefore reverse that judgment. Id. at *2.
 
 
 
10/30/2014
Category: Infringement 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleIris Corp. v. Japan Airlines Corp., No. 2010-1051 (Fed. Cir. Oct. 21, 2014).
IssueAL moved to dismiss IRIS’s suit for failure to state a claim upon which relief can be granted. See Fed. R. Civ. P. 12(b)(6). […] JAL argued that federal laws requiring the examination of passports conflict with the patent laws and therefore exempt JAL from infringement liability.
Iris Corp. at *3.
HoldingAccordingly, because JAL’s allegedly infringing acts are carried out “for the United States” under 28 U.S.C. § 1498(a), we affirm the district court’s decision to dismiss IRIS’s suit.
Id. at *6.
 
 
 
 
10/01/2014
Category: Infringement 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleEMD Millipore Corp. v. AllPure Tech., Inc., No. 2014-1140 (Fed. Cir. Sept. 29, 2014).
Issues
[A. No Literal Infringement] Millipore claims that when the TAKEONE device is disassembled, all components of the transfer member are still removed from the magazine part (135), even if the components of the seal [...] are no longer physically connected. […]
EMD Millipore Corp. at *7.
[B. Prosecution History Estoppel Bars Millipore’s Doctrine of Equivalents Arguments] AllPure argues that the district court should not have considered whether Millipore could maintain a claim for infringement under the doctrine of equivalents because prosecution history estoppel bars such a claim.
Id. at *10.
Holdings
[A. No Literal Infringement] [W]e conclude that there is no genuine issue of material fact relating to whether the TAKEONE device literally contains “at least one removable, replaceable transfer member[,]” [because the TAKEONE device lacks a seal when it is disassembled, it necessarily lacks the claimed “removable, replaceable transfer member.”]
Id. at *7 (text added).
[B. Prosecution History Estoppel Bars Millipore’s Doctrine of Equivalents Arguments] The district court should have proceeded under the presumption that prosecution history estoppel applies [because, at the time of prosecution, the patentee amended claims to alter the scope in response to an Office Action. The amendment including both deletions and additions to the claim scope.].
Id. at *12 (text added).
 
 
 
 
 
09/01/2014
Category: Infringement 
 
 
 
By: Samuel Dillon, Contributor 
 
TitleIntouch Technologies, Inc. v. VGO Comm., Inc., No. 2013-1201 (Fed. Cir. May 9, 2014).
Issues
[1] Claim construction[Whether the district court erred in construing] the ’030 patent claim term [a] “arbitrating to control” and the ’357 patent claim terms “arbitrator” and [b] “call back mechanism.”
InTouch at *17 (text added).
[2] Infringement[Whether the district court was correct to find that] all three [jury] verdicts of non-infringement [were] supported by substantial evidence [when considering certain] limitations: [a] arbitrator/arbitrating, [b] call back mechanism, [c] camera movement [...]
Id. at *22 (text added).
[3] Invalidity[Whether the district court was correct to find] that the record supports the jury’s verdict of invalidity for the ’357 and ’030 patents.
Id. at *33 (text added).
Holdings
[1] Claim construction
[a: Arbitrator/Arbitrating] [I]t is clear that, for the arbitrator to control access, it needs the capability to consider and resolve access requests from and among multiple users. . . . For these reasons, we conclude that the district court did not err in construing the terms “arbitrator” and “arbitrating” to require a determination of which user among multiple users has exclusive control of the robot.
InTouch at *18-19.
[b: Call Back Mechanism] The plain language of the claim supports the district court’s construction. The phrase, “call back mechanism,” on its face connotes an intention to call back a user that was previously denied access.
Id. at *20.
[2] Infringement
[a: Arbitrator/Arbitrating] Because others cannot access the robot until the user releases control, the VGo system never considers and resolves competing requests for that robot, and thus, does not “determine” which user has exclusive control of the robot. Consequently, the VGo system lacks an “arbitrator.”
Id. at *24.
[b: Call Back Mechanism] [T]he VGo system cannot even identify any user that wants access, and it certainly does not know who may have previously sought access, but was denied. . . . Based on these conclusions, we find that substantial evidence supports the jury’s finding of non-infringement of claim 79 of the ’357 patent.
Id. at *30.
[3] InvalidityWhile our standard of review regarding the jury’s implied factual findings is a stringent one, we agree with InTouch that the evidence on which VGo relies is not substantial enough to support an obviousness finding. Indeed, it did not even come close. Dr. Yanco’s testimony was plagued with numerous problems, including her failure to: (1) identify sufficient reasons or motivations to combine the asserted prior references; (2) focus on the relevant time frame of 2001; or (3) consider any objective evidence of nonobviousness. Dr. Yanco’s testimony was nothing more than impermissible hindsight; she opined that all of the elements of the claims disparately existed in the prior art, but failed to provide the glue to combine these references.
Id. at *34-35.
 
 
 
06/02/2014
Category: Infringement  
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor   
 
TitleLimelight Networks, Inc. v. Akamai Tech., Inc., No. 12-786 (June 2, 2014).
IssueThis case presents the question whether a defendant may be liable for inducing infringement of a patent under 35 U. S. C. §271(b) when no one has directly infringed the patent under §271(a) or any other statutory provision.
Limelight Networks, Inc. at *1.
HoldingThe statutory text and structure and our prior case law require that we answer this question in the negative [because inducement liability may arise if, and only if, there is direct infringement].
Id. at *1 (text added).
 
 
 
Editor's Notes
For further insight, check out the Audio Brief of oral arguments in Limelight Networks v. Akamai by clicking here.
 
 
 
05/12/2014
Category: Infringement  
 
 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
 
03/28/2014
Category: Infringement   
 
 
 
 By: Eric Paul Smith, Contributor  
 
TitlePfizer Inc. v. Teva Pharmaceuticals USA, Inc., Nos. 2012-1576, -1601, -1602, -1603, -1604, -1605, -1607 (Fed. Cir. Feb. 6, 2014) (non-precedential).
Issues"Appellants[] appeal from a final judgment . . . that found various claims of the asserted patents infringed and from the court's holdings regarding enablement, written description, and obviousness." Pfizer at *4 (citations omitted). "Due to its scope and the breadth of the injunction entered, the disposition of this appeal rests entirely on a single claim: claim 2 of [U.S. Patent No. 6,197,819 (the ']'819 patent[')]." Id. at *5. At issue are (1) whether "the district court [correctly] construed the term '4-amino-3-(2-methylpropyl) butanoic acid' to mean 'the chemical compound 4-amino-3-(2-methylpropyl) butanoic acid,' without limitationas to stereochemical form," Pfizer at *6; and (2) whether "claim 2 is not invalid for lack of [a] enablement, [b] insufficient written description, or [c] obviousness," Id. at *7.
Holdings
(1) "We perceive no error in the district court's construction. . . . The patent specification discusses 4-amino-3-(2-methylpropyl) butanoic acid [hereinafter 3-isobutylGABA] as the 'preferred compound' generally and without regard to its stereochemistry. The specification makes clear that the patentee expressly used the word 'racemate,' 'racemic,' or its standard prefix (R, S) to refer to the chiral compound's racemate. Likewise, the patentee used standard prefixes (R) or (S) to designate a particular enantiomer of the compound. Because the patentee included no such references or prefixes in claim 2, it should not be so limited." Pfizer at *9 (citations omitted).
(2)(a) "In view of the finding that enantiomer separation methods are well-known and routine to a person of ordinary skill, we agree with the district court that the inventors were not required to provide a detailed recipe for preparing every conceivable permutation of the compound the invented to be entitled to a claim covering that compound. . . . [C]laim 2 satisfies the requirements under § 112(a) because the '692 application's disclosure, coupled with the methods for synthesis and resolution that were found to be well-known and routine in the art, is sufficiently enabling." Id. at *12 (citations omitted).
(2)(b) "[W]ritten description does not require inventors . . . to reduce to practice and be in physical possession of every species . . . of a genus . . . claim. [A]n application satisfies the written description requirement when it details 'relevant identifying characteristics' such that the compound can be distinguished from other compounds. Here, the '692 application not only disclosed the structure of 3-isobutylGABA as the preferred embodiment of the invention, but also set forth in vitro and in vivo data for the compound, and described a method of synthesizing the compound. [S]uch a description is sufficient for persons of ordinary skill in the art to recognize that the inventor invented what is claimed." Id. at *14 (citations omitted).
(2)(c) "The district court did not err in finding that Appellants failed to establish that gabapentin or 3-isopropylGABA would have been selected as lead compounds, or that Appellants failed to set forth evidence identifying the necessary teachings for a skilled artisan to modify alkyl groups at GABA's 3-position to improve anticonvulsant activity. Because we agree with the district court that the Appellants failed to prove that claim 2 would have been prima facie obvious over the asserted prior art compounds, we need not address the court's findings regarding secondary considerations of nonobviousness." Id. at *20 (citations omitted).
 
 
03/20/2014
Category: Infringement   
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleAlcon Research Ltd. v. Barr Lab., Inc., No. 2012-1340, 1341 (Fed. Cir. March 18, 2014).
Issues
[1: infringement] Alcon argues that the district court erred in finding that Barr’s ANDA product did not infringe the asserted claims of Alcon’s ’287 and ’062 patents because its testing of travoprost formulations containing the same PECO [polyethoxylated castor oil] in the same concentration as Barr’s proposed generic product demonstrated that the PECO added to Barr’s composition enhances the stability of the prostaglandin.
Alcon Research at *7 (text added).
[2: enablement] Alcon argues that the district court erred in holding the asserted claims of the ’287 and ’062 patents invalid for lack of enablement because it only weighed the breadth of the claims against the detail of the patent disclosures […] that Barr presented no evidence that any experimentation would be required for a person of ordinary skill in the art to practice the invention as claimed.
Id. at *11.
[3: written description] Barr [argues] that the claims “flunk the written description requirement” because they encompass “a method for enhancing the chemical stability of innumerable prostaglandins by adding to them PECO in an endless number of combinations and concentrations” and there- fore are not precise and “overreach” the scope of the patent disclosures.
Id. at *15 (text added).
Holdings
[1: infringement] We thus conclude that the district court did not clearly err in finding that the data in Alcon’s Table 7 had no bearing on whether Barr’s proposed generic product infringed Alcon’s patents. The formulations tested in Alcon’s stability study were meaningfully different from the product described in Barr’s ANDA and thus provided no basis from which to draw any reliable inferences regarding whether the PECO in Barr’s composition would chemically stabilize the prostaglandin.
Id. at *10.
[2: enablement] The district court erred here because its enablement analysis did not address that determinative question: Barr failed to make the threshold showing that any experimentation is necessary to practice the claimed methods, i.e., to use PECO to enhance the stability of a prostaglandin given the disclosures of Alcon’s ’287 and ’062 patents. Instead, the district court’s holding rested on its finding that the full scope of the claims was not enabled after applying the Wands factors as if they were a generalized test for deciding whether a patent disclosure is sufficiently detailed to support a broad claim.
Id. at *12.
[3: written description] [T]he ’287 and ’062 patent disclosures demonstrate that the inventors possessed the claimed invention: they conceived of and described their invention at the time the respective original patent applications were filed, including the idea that adding PECO would enhance the chemical stability of prostaglandins across a range of various formulation parameters as cited by the district court. […] That is all that the written description requirement demands.
Id. at *17 (internal citations omitted).
 
 
 
 
 
02/19/2014
Category: Infringement  
 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleRing & Pinion Serv. Inc. v. Arb Corp., No. 2013-1238 (Fed. Cir. Feb. 19, 2014).
IssueThus, the parties agreed that the outcome of the case would be determined by the resolution of a single legal issue: whether an equivalent is barred under the doctrine of equivalents because it was foreseeable at the time of the patent application. […]
Ring & Pinion Serv. Inc. at *3.
HoldingWe conclude that the foreseeability of an equivalent at the time of patenting is not a bar to a finding of infringement under the doctrine of equivalents.
Id. at *5.
 

02/13/2014
Category: Infringement  
 
 
 
 By: John Kirkpatrick, Contributor 
 
TitleSpecialty House of Creation, Inc. v. Quapaw Tribe of Okla., 2011 U.S. Dist. LEXIS 9179, (N.D. Okla. Jan. 27, 2011).
Issues
[1] [Does] federal patent law waive tribal sovereign immunity because [35 U.S.C. § 271] is a statute of general applicability[?] Specialty House at *2 (text added).
[2] [Did] the Quapaw Tribe waived any sovereign immunity it possessed in the Tribal-State Gaming Compact Between the Quapaw Tribe of Oklahoma and the State of Oklahoma[?] Id. at 4 (text added).
Holdings
[1] “It is settled that a waiver of sovereign immunity ‘cannot be implied but must be unequivocally expressed.’” Id. at *2 (citation removed).
[2] Patent infringement claims are not claims for “personal injury or property damage” that arose “out of incidents occurring at a facility” and therefore the Gaming Compact does not waive the Tribe’s immunity from such suits. Id. at 4.
 
01/10/2014
Category: Infringement 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor   
 
TitleNazomi Comm., Inc. v. Nokia Corp., No. 2013-1165 (Fed. Cir. Jan. 10, 2014).
Issues
[1] The district court construed the claims [directed to a CPU] as claiming an apparatus, comprising both hardware and software, capable of practicing the claimed functionality. The [district] court rejected Nazomi’s construction requiring only hardware that was capable of performing the claimed functionalities.
Nazomi Comm., Inc. at *9-10 (text added).
[2] [W]e have held that “an apparatus claim directed to a computer that is claimed in functional terms is nonetheless infringed so long as the product is designed in such a way as to enable the user of that [product] to utilize the function without having to modify the product.” […] Nazomi argues that installation of the JTEK software is not a modification that precludes a finding of infringement.
Id. at *14 (internal citations omitted, text added).
Holdings
[1] The face of the claims shows that each particular functionality is a claim limitation [since hardware cannot meet functional claim limitations in the absence of enabling software].
Id. at *10 (text added).
[2] The purchase and installation of the JTEK software clearly constitutes a “modification” of the accused products [because the accused products infringe only if presently structured to perform the claimed function, rather than after a modification - such as installation of software].
Id. at *14 (text added).
 
11/07/2013
Category: Infringement 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleLifescan Scotland, Ltd. v. Shasta Tech., LLC, No. 2013-1271 (Fed. Cir. Nov. 4, 2013).
Issues
[1] LifeScan’s primary argument is that the distribution of its meters, whether by sale or gift, does not trigger exhaustion because its meters do not substantially embody the claims of the ’105 patent [per the requirements of the Supreme Court’s decision in Quanta].
Lifescan Scotland, Ltd. at *8 (text added).
[2] LifeScan’s final argument is that even if its meters substantially embody the asserted claims, patent exhaustion is nevertheless inapplicable to the 60% of its meters that are not sold but instead distributed for free. LifeScan asserts that it received no “reward” for distributing them (because they were distributed without charge), and that the district court therefore properly found that patent exhaustion did not apply. We are therefore asked to decide, as a matter of first impression, whether patent exhaustion applies to a product distributed for free.
Id. at *22-23 (text added).
HoldingsIn summary, we hold [2] that patent exhaustion principles apply equally to all authorized transfers of title in property, regardless of whether the particular transfer at issue constituted a gift or a sale. We further conclude [1] that LifeScan’s OneTouch Ultra meters substantially embody the methods claimed in the ’105 patent [because intrinsic evidence supports that error-detecting functions are the inventive concept of the claims] and [as a result] that [the] distribution [of LifeScan’s OneTouch Ultra meters] therefore exhausts LifeScan’s patent rights.
Id. at *29 (text added).
 
11/04/2013
Category: Infringement 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleIntegrated Tech. Corp. v. Rudolph Tech., Inc., No. 2012-1593, 1618 (Fed. Cir. Nov. 4, 2013).
Issues
[1] Rudolph argues that the court erred as a matter of law by concluding that the amendment was not narrowing. […] Rudolph argues that the amendment narrowed the scope of the claim by reciting that the probe tip must be “driven in contact with said window” in both recited states. It argues that prosecution history estoppel presumptively applies because the narrowing amendment was in response to patentability rejections.
Integrated Tech. at *5.
[2] Whether ITC [Integrated Tech. Corp. ] met its burden of proving that an exception [such as tangential relation or forseeability] to prosecution history estoppel applies.
Id. at *7 (text added).
Holdings
[1] We hold that ITC’s narrowing amendment during prosecution surrendered the equivalent from the scope of the asserted claims and that prosecution history estoppel bars the application of the doctrine of equivalents.
Integrated Tech. at *10.
[2] We hold that [Integrated Tech. Corp. ] has not [proven any exceptions apply because (i) the narrowing amendment was purposely related to the equivalent and (ii) the surrendered subject matter was forseeable at the time of amendment], and therefore prosecution history estoppel bars the application of the doctrine of equivalents.
Id. at *7 (text added).
 
10/17/2013
Category: Infringement 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleKeurig, Inc. v. Sturm Foods, Inc., No. 2013-1072 (Fed. Cir. Oct. 17, 2013).
IssueKeurig argues that the district court erred by declining to apply the substantial embodiment test articulated by the Supreme Court in Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), which Keurig insists is the only relevant analysis for exhaustion of its asserted method claims.
Keurig at *5.
Holding[A fact pattern necessitating application of the Quanta/Univis substantial embodiment test] is not the case before us, which presents an a fortiori fact situation in which the product sold by Keurig was patented. […] “[W]here a person ha[s] purchased a patented machine of the patentee or his assignee, this purchase carrie[s] with it the right to the use of the machine so long as it [is] capable of use.” Quanta, 553 U.S. at 625 (quoting Adams v. Burke, 84 U.S. 453, 455 (1873)). The Court’s decision in Quanta did not alter this principle.
Keurig at *7.
 
09/30/2013
Category: Infringement  
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor
 
TitleMeadwestvaco Corp. v. Rexam Beauty and Closures, Inc. No. 2012-1518, -1527 (Fed. Cir. Sept. 26, 2013).
Issues[1] Valois and Rexam both opposed summary judgment [of nonobviousness], arguing that material issues of fact necessitated a trial [because of the district court's nonobviousness finding was limited to EFEP use in a fragrance product].
Meadwestvaco, at *7 (text added).
[2] Rexam argues […] that [Dr. Reibenspies' expert] testimony should have been excluded because Dr. Reibenspies did not follow all of the XRD parameters listed in the ’132 patent. Therefore, according to Rexam, his testimony is legally irrelevant [and therefore inadmissable] to proving infringement.
Id. at *17 (text added).
Holding[1] Valois’s evidence created material issues of fact inappropriate for resolution on summary judgment, which necessitates a remand [because the secondary considerations analysis was limited to a field that was not recited in the claims, and because material issues of fact were resolved in favor of the moving party].
Meadwestvaco, at *11 (text added).
[2] We agree with MWV that Rexam’s arguments go to infringement and not admissibility [because] Dr. Reibenspies’s testimony was not an attempt to apply a new claim construction to the XRD crystallinity terms [but instead a way of showing infringement and that any deviation by Dr. Reibenspies' test from the XRD parameters in the specification were minor].
Id. at *17-18 (text added).
 
09/27/2013
Category: Infringement
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor
 
TitleSunovion Pharma., Inc. v. Dr. Reddy's Lab., Ltd., No. 2013-1335 (Fed. Cir. Sept. 26, 2013).
Issue[1] Sunovion argues that the claim limitation “essentially free” should be defined as “largely but not wholly free” of the levorotatory isomer, which encompasses greater than approximately 90% dextrorotatory isomer by weight of the total weight of zopiclone.
Sunovion, at *7.
[2] Reddy […] argues that the Cappuccino certification [, which promises a non-infringing generic product under ANDA,] assured the district court that Reddy would only market generic eszopiclone tablets containing 0.3–0.6% levorotatory isomer, asserting that “literal non-infringement is as simple as 0.3 is more than 0.25.”
Id. at *11.
Holding[1] [Because the specification was silent on the meaning of the term "essentially free",] [t]he applicants’ repeated and consistent attribution [in the prosecution history] of the purity level of less than 0.25% levorotatory isomer to “the invention” and “the instant invention” thus gives meaning to the term “essentially free.”
Sunovion, at *10 (text added).
[2] We therefore hold that any so-called certification [to a district court] pledging not to infringe cannot override the conclusion that when a drug manufacturer seeks FDA approval to market a generic compound within the scope of a valid patent, it is an infringement as a matter of law. Simply saying “But I won’t do it” is not enough to avoid infringement.
Id. at *15 (text added).
 
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