Laches: a viable defense against patent infringement, but for how long?
| 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.”
Be Mindful that the Potential Reach of Claimed Components under the Doctrine of Equivalents Can Be Affected by Amendments to Claimed Sub-Components.
| 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.
Tags: doctrine of equivalents > infringement > literal infringement > prosecution history estoppel
Inequitable Conduct under the Therasense Standard
| 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.
