Seagate Objective-Reckless Standard is Question of Law to be Decided by Judge and Subject to De Novo Review
| June 28, 2012
Bard Peripheral v. W.L.Gore (on rehearing)
June 14, 2012
Panel: Newman, Gajarsa, and Linn. Opinion by Gajarsa. Dissent-in-Part by Newman.
Summary:
Enhanced damages on willful infringement can be awarded under 35 U.S.C. § 284. For determining willful infringement, In re Seagate established a two-pronged test requiring showing that (1) the infringer acted despite an objectively high likelihood of infringement, and that (2) the infringer knew or should have known the risk. CAFC established the rule that prong (1) tends not to be met where an infringer relies on a reasonable defense. According to CAFC, while an assessment of prong (2) may be a question of fact, determination of prong (1) entails an objective assessment of potential defenses based on the risk, and in considering prong (1) of Seagate, the court is in the best position for making the determination of reasonableness. Thus, CAFC ruled that the objective recklessness is best decided by the judge as a question of law subject to de novo review, even though there are underlying mixed questions of law and fact.
米国特許法284条により、判事は故意侵害に対して損害賠償額を増額することができる。Seagate判決は、故意侵害の立証として、 (1)客観的に侵害可能性が高いにも関らず侵害者が行動したこと、及び(2)侵害者がそのリスクを認識していたこと、を求める二要因基準を確立した。また、侵害者が合理的な抗弁に依存している場合は、要因(1)は通常満足されないことも確立してきている。要因(2) は事実問題であるが、要因(1)の判断は、侵害のリスクに関する、潜在的な抗弁の客観的な評価を含む。したがって、客観的無謀さは、法律と事実の混合した問題に基づくものではあるが、法律問題として、判事が判断するのが最善であり、控訴において全面的に見直されるものである。
For our discussion of the CAFC’s previous holding in this case, please click here.
Tags: §284 > objective recklessness > willful infringement
CAFC pointers on proving lack of “substantial non-infringing uses” in pleading contributory infringement
| June 20, 2012
Toshiba Corporation v. Imation Corp.
Jun 11, 2012
Panel: Dyk, Schall, and Moore. Opinion by Moore. Dissent by Dyk.
Summary:
(1) Grant of summary judgment of non-infringement as to contributory infringement of ‘751 patent affirmed because plaintiff did not meet burden of proof that there was a lack of substantial non-infringing uses.
(2) Grant of summary judgment of non-infringement as to induced infringement of ‘751 patent vacated because district court erred as a matter of law in holding that the existence of a substantial non-infringing use precludes a finding of induced infringement.
(3) Grant of summary judgment of non-infringement of ‘966 patent vacated because it was based on erroneous claim construction.
(4) No clear “take away” on claim construction from discourse between majority and dissent.
Tags: claims construction > contributory infringement > induced infringement > infringement > substantial non-infringing use
Rule 4(k)(2) Personal Jurisdiction Over a Foreign Defendant
| June 13, 2012
Merial Limited v. Cipla Limited
May 31, 2012
Panel: Lourie, Schall, and Reyna. Opinion by Lourie. Dissent by Schall.
Summary:
Foreign defendant Cipla chose not to respond to plaintiff Merial’s 2007 lawsuit for patent infringement because Cipla believed there was no personal jurisdiction under Georgia’s long arm statute. The Georgia district court entered a default judgment and permanent injunction against Cipla. During a subsequent contempt proceeding to enforce the injunction, the Georgia court found that Cipla was subject to personal jurisdiction pursuant to Federal Rule of Civil Procedure 4(k)(2) instead of the Georgia long-arm statute. Cipla’s consent to jurisdiction in another forum (the Northern District of Illinois) during the contempt proceedings did not defeat the Georgia court’s reliance on Rule 4(k)(2) because the Federal Circuit held that Cipla failed to show that jurisdiction would have been proper in that other forum at the time of filing of the complaint in Georgia, regardless of Cipla’s later consent to jurisdiction in Illinois. This Federal Circuit decision clarifies that a foreign defendant, to defeat personal jurisdiction under Rule 4(k)(2), must not only identify another forum where suit is possible, but also show that suit is possible in that other forum at the time the suit was filed. A later consent to jurisdiction in another forum may not be enough to defeat personal jurisdiction under Rule 4(k)(2).
CAFC defines “common sense” and warns against impermissible hindsight
| June 6, 2012
Mintz and Jif-Pak Manufacturing v. Dietz & Watson and Package Concepts and Materials
May 30, 2012
Rader, Newman, Dyk. Opinion by Rader.
Summary
This case highlights the important point that obviousness cannot be established by vague and unsubstantiated reliance on “common sense.” Rather, Judge Rader defines the term “common sense” as “knowledge so basic that it certainly lies within the skill set of an ordinary artisan.” The CAFC also warns against hindsight due to defining the problem to be solved based on the solution found by the inventors. Furthermore, the CAFC reminds us that when references from a secondary technical field are used in a rejection, the person of ordinary skill in the art is not a person familiar merely with this secondary technical field, but rather a person familiar with at least the primary technical field.
Tags: common sense > obvious to try > obviousness
