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.
What Do a Resealable Cartridge for Low Pressure Liquid Chromatography and a Soda-Pop Bottle and Cap Have In Common?
| 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.
CAFC provides guidance on Nautilus indefiniteness standard
| September 18, 2014
Interval Licensing LLC v. AOL, Inc. (Precedential)
September 10, 2014
Panel: Taranto and Chen. Opinion by Chen.
Summary:
The Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc. (2014) rejected the Federal Circuit’s “insolubly ambiguous” test for indefiniteness, holding that the claim language must be capable of interpretation with “reasonable certainty” to avoid indefiniteness under 35 U.S.C. 112, second paragraph (now AIA 35 U.S.C. 112(b)).
Citing to Nautilus, but weaving in its own pre-Nautilus case law, a Federal Circuit panel affirms the District Court’s pre-Nautilus holding that claims reciting the expression “in an unobtrusive manner” are invalid for indefiniteness. Notably, the Appeals Court refuses to narrow the expression to an example of the patents’ description, in the absence of an indication in the description that the expression is defined by this example.
EPOS Technologies v. Pegasus Technologies
| September 10, 2014
September 5, 2014
Panel: Hughes and Bryson. Opinion by Hughes.
Discussion:
The Doctrine of Equivalents is applicable in cases where the accused product or process does not literally meet one or more of the limitations of the patent-in-suit. Essentially, a court asks whether the accused product or process possesses a feature(s) which is the equivalent of the limitation(s) not literally met.
Tags: Infringement under the Doctrine of Equivalents > the Binary Limitation of the Doctrine
Jurisdiction for Appeal
| September 4, 2014
Arlington Industries, Inc. v. Bridgeport Fittings, Inc.
July 17, 2014
Panel: Chen, Clevenger and Hughes. Opinion by Hughes.
Summary
Arlington Industries, Inc. is the owner of U. S. Patent No. 6,335,488. The ‘488 patent is directed to a method for connecting electrical cables to a junction box using electrical fittings. Arlington and Bridgeport Fittings, Inc. compete in the same industry.
Arlington sued Bridgeport in 2004 for patent infringement of the ‘488 patent. As a result, the two parties entered a settlement agreement in which Bridgeport agreed to be enjoined from making, using, or selling certain products or their “colorable imitations”.
Bridgeport redesigned its connectors in 2005 to have a frustoconical leading edge. The redesigned connectors were sold by Bridgeport as the following models: 38ASP and 38OSP.
In 2012 Arlington sought a contempt order holding that Bridgeport’s redesigned connectors violated the original agreement and the court’s order. The district court held Bridgeport in contempt in 2013, because it found the redesigned connectors were not more than “colorable imitations” of the original connectors. Furthermore, the district court also found that the redesigned connectors of Bridgeport met claim 1 of the ‘488 patent by clear and convincing evidence.
Bridgeport appealed the contempt order of the district court and the determination that the redesigned connectors were not more than “colorable limitations” of Bridgeport’s original connectors.
When Legitimate Advocacy Crosses the Line to Inequitable Conduct
| August 27, 2014
Apotex Inc. and Apotex Corp. v. UCB, Inc., and Kremers Urban Pharmaceuticals, Inc., andSchwarz Pharma, Inc., Paddock Laboratories, LLLC, andPerrigo Company
August 15, 2014
Panel: Reyna, Wallach, and Hughes. Opinion by Reyna.
There is a line separating strong advocacy for your patent application and violating your duty of candor before the U.S. Patent & Trademark Office. This precedential decision illustrates when the line is crossed to result in a finding of inequitable conduct, leading to a patent becoming unenforceable.
Written Description
| August 20, 2014
ScriptPro, LLC v. Innovation Associates, Inc.
August 6, 2014
Panel: Taranto, Bryson and Hughes. Opinion by Taranto
Summary:
ScriptPro sued Innovation Associates, Inc, alleging infringement of claims 1, 2, 4, and 8 of U.S. Patent No. 6,910,601. Innovation Associates counterclaimed on various grounds, including invalidity under 35 U.S.C. § 112.
Shortly after suit filed, Innovation Associates initiated an inter partes reexamination of the ’601 patent at the PTO, and the district court stayed proceedings in this case to await the PTO’s determination.
The PTO completed its reexamination of the ’601 patent. It confirmed amended claims 1 and 2 (amended in ways not relevant to this appeal). It confirmed claim 4, formerly a dependent claim, as rewritten to be an independent claim, but not otherwise amended. And it confirmed claim 8 without amendment. The amendments are not relevant to the issues on appeal.
Proceedings in the infringement suit resumed.
The district court granted summary judgment for Innovation Associates, holding that the asserted claims were invalid under 35 U.S.C. § 112.
The district court rested its holding on a single conclusion—that the specification describes a machine containing “sensors,” whereas the claims at issue do not claim a machine having “sensors.”
ScriptPro appealed.
The district court granted summary judgment of invalidity on the ground that the patent’s specification does not describe the subject matter of the asserted claims, which do not require sensors. This is the only issue on appeal.
The district court agreed with Innovation Associates that the specification indisputably limits the invention to a collating unit that uses sensors to determine whether a particular holding area is full when selecting a holding area for storage of a prescription container.
The district court concluded “no reasonable jury could find that the inventors were in possession of a collating unit that operated without sensors.”
The district court decision is reversed.
Tags: abstract > claims as originally filed > specification > written description
In the wake of Alice Corp. v. CLS Bank Int’l, the Federal Circuit strikes down another patentee’s claims for reciting patent ineligible abstract idea
| August 18, 2014
Digitech Image Technologies v. Electronics For Imaging, Inc.
July 11, 2014
Panel: Moore, Reyna, Hughes. Opinion by Reyna.
Summary
Digitech is the assignee of U.S. Patent No. 6,128,415 (the ‘415 patent) directed to a device profile for a digital image reproduction system and a method of generating a device profile in a digital image reproduction system. Digitech sued 32 defendants for infringement in the U.S. District Court for the Central District of California. Several defendants filed summary judgment motions seeking to invalidate the asserted claims of the ‘415 patent under 35 U.S.C. §101. The district court granted the defendants’ motions and found all of the asserted claims to be subject matter ineligible. On appeal, the Court of Appeals for the Federal Circuit (CAFC) affirmed.
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