Laches: a viable defense against patent infringement, but for how long?

Le-Nhung McLeland | October 16, 2014

SCA Hygiene Products Aktiebolag v. First Quality Products, LLC

Summary:

SCA owns U.S. Patent No. 6,375,646 (the ‘646 patent) for adult incontinence products.

October 31, 2003:  SCA sent a warning letter to First Quality, stating that SCA believes First Quality’s pants-type diapers infringe the ‘646 patent, and asking First Quality to either explain why the products do not infringe, or give assurance that First Quality will stop making and selling the products if First Quality believes the products to infringe the patent.

November 21, 2003:  First Quality responded by letter, stating that prior art U.S. Patent No. 5,415,649 (the ‘649 prior art patent) invalidates the ‘646 patent.

July 7, 2004:  SCA filed a request for ex parte reexamination of the ‘646 patent over the ‘649 prior art patent, but did not notify First Quality about the reexamination.

March 27, 2007:  The PTO confirmed the patentability of all the original claims of the ‘646 patent and also granted new claims added during the reexamination.

August 2, 2010:  SCA filed suit against First Quality for infringement of the ‘646 patent (six years and nine month after sending the warning letter, and more than three years after the conclusion of the reexamination.)  First Quality counterclaimed for declaratory judgment of non-infringement and invalidity. After the district court’s claim construction order, First Quality moved for partial summary judgment of non-infringement, and summary judgment for laches and equitable estoppel.  The district court granted summary judgment for laches and equitable estoppel, and dismissed the remaining motion as moot.  SCA appealed.

The conclusion about laches or equitable estoppel is “committed to the sound discretion of the trial judge.”  Therefore, the standard of review of those conclusions by the CAFC is “abuse of discretion” by the trial judge.  Since the underlying elements of laches and equitable estoppel are questions of fact, the CAFC reviews those findings of fact for “clear error.”  However, when summary judgment has been granted, the CAFC reviews the factual elements de novo to determine whether any “genuine issues of material fact remain.”


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Be Mindful that the Potential Reach of Claimed Components under the Doctrine of Equivalents Can Be Affected by Amendments to Claimed Sub-Components.

Stephen Parker | October 9, 2014

EMD Millipore Corporation v. Allpure Technologies, Inc. (Precedential Opinion).

September 29, 2014

Panel:  Prost, O’Malley and Hughes.  Opinion by Prost.

Summary

EMD Millipore Corporation (Millipore) appeals the District of Massachusetts decision that the accused infringer, Allpure Technologies, Inc. (Allpure) does not infringe its U.S. Patent No. 6,032,543 entitled a Device for Introduction and/or Withdrawal of a Medium into/from a Container, either literally or under the doctrine of equivalents.   The Federal Circuit affirmed that there was no literal infringement because the claims required a removable transfer member having a two part seal connected after removal, while the Allpure device had two parts of a seal separated after disassembly.   In addition, the Federal Circuit held that Allpure did not infringe under the doctrine of equivalents due to prosecution history estoppel  based on narrowing amendments limiting the transfer member to such a two part seal, along with a lack of any argument that the reasons for such amendments was not a substantial one related to patentability.


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Inequitable Conduct under the Therasense Standard

Andrew Melick | October 1, 2014

American Calcar, Inc. v. American Honda Motor Co., Inc.

September 26, 2014

Panel:  Prost, Newman and Wallach.  Opinion by Prost. Dissent by Newman.

Summary:

American Calcar, Inc. (“Calcar”) sued American Honda Motor Co., Inc. (“Honda”) for infringement of fifteen patents, three of which are involved in this case. The three patents are related by a common priority application and share a common specification. The patents deal with a multimedia system for accessing vehicle information and controlling vehicle functions. The parent application disclosed and explicitly referred to a system used in the 1996 Acura RL. However, Honda alleged that Calcar deliberately withheld the 1996 Acura RL owner’s manual and photographs taken of the system that were in Calcar’s possession. The district court found the missing information to be material under the “but for” materiality standard and found that the missing information was intentionally withheld based on the “single reasonable inference” standard. The CAFC affirmed the district court’s finding.


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What Do a Resealable Cartridge for Low Pressure Liquid Chromatography and a Soda-Pop Bottle and Cap Have In Common?

Adele Critchley | September 23, 2014

Scientific Plastic Products, Inc., v. Biotage AB.

September 10, 2014

Panel:  Newman, Moore and Wallach.  Opinion by Newman. Dissent by Moore.

Summary

The CAFC affirmed the Patent Trial and Appeal Board’s decision that all claims of the three disputed patents held by Scientific Plastic Products, Inc. (SPP) would have been obvious.

The CAFC held that the cited references, King and Strassheimer, both of which related to the sealing of a beverage container, were available as prior art against the claimed resealable cartridge for low pressure liquid chromatography (LPLC).

The CAFC held that although the cited reference Yamada failed to explicitly disclose a leakage problem, by “providing for the presence of an O-ring,” Yamada implicitly acknowledged that there is the potential for a leak. Further, the CAFC concluded that the inventors, in the patents in question, identified that the potential for leaks is a “known problem.”

Accordingly, the CAFC found adequate reason for one of ordinary skill in the art to turn to King or Strassheimer to improve the sealing arrangement set forth in Yamada.


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