Federal Circuit Patent Updates - April 2008

(Rader) Vacating order of the district court and remanding with instructions to dismiss due to lack of subject matter jurisdiction. When only remaining issue was a claim for attorney fees, district court issued an order regarding spoliation of evidence. However, once patentee had "offered the entire amount of attorney fees in dispute, the case became moot. . . Because the district court's writing is an impermissible advisory opinion, this court vacates that advisory opinion as issued without jurisdiction." WilmerHale represented the defendant-appellant, Rambus, Inc.

A full version of the opinion is available here.

(Gajarsa) Affirming denial of motions to dismiss for lack of subject matter jurisdiction and for judgment as a matter of law. Substantial evidence supported the jury’s finding of infringement. “[W]hether the allegedly infringing act happened in the United States is an element of the claim for patent infringement, not a prerequisite for subject matter jurisdiction.”

A full version of the decision is available here.

(Per Curiam) Affirming final judgment awarding attorney fees.

A full version of the decision is available here.

(Kennelly) Affirming summary judgment in favor of patentee-defendant on unfair competition, intentional interference with contractual relations, and other non-patent claims. Communications sent by patentee to its customers asserting that plaintiff infringed its patents were not objectively baseless.

A full version of the opinion is available here.

(Rader) Vacating verdict of infringement based on faulty claim construction. Also reversing holding that one claim was not anticipated and remanding for a new trial on both invalidity and infringement of the other claims. The court's anticipation ruling was based on its application of the rules of English grammar to the text of the prior art reference. Claims including means plus function elements were held indefinite where the disclosed means was "software" but there was an inadequate description of an algorithm for performing the claimed function.

A full version of the decision is available here.

(Rader) Affirming finding of prosecution history estoppel where the defendant did not show that the alleged equivalent was unforeseeable or that the narrowing amendment was tangential. The district court's decision was based on live witness testimony as to which credibility determinations were made. Newman dissented.

A full version of the decision is available here.

(Fogel) Remanding case that had been stayed for arbitration after finding that the parties were not bound by the arbitration provision.

A full version of the order is available here.

(Schall) Partial reversal and affirmance of numerous summary judgment rulings of patents related to televisions and wired remote control devices. In addition to claim construction issues, the Court (1) affirmed a prior use bar defense (2) affirmed an implied license defense based on an express license between Zenith and manufacturers (3) remanded an anticipation defense which it characterized as a "practicing the prior art" defense (4) remanded an inequitable conduct claim which the distinct court had erroneously dismissed as moot (5) remanded the issue of costs because the district court had not explained its decision.

A full version of the order is available here.

(Dyk) Reversing summary judgment of non-infringement of method of detecting computer viruses based on faulty claim construction. A preamble was interpreted not to be a limitation of the claims. Where accused product can only be used in infringing way, there was sufficient evidence of inducement even though there was not evidence that any particular customer had directly infringed. A defense of laches was considered as an alternative grounds of affirmance, but a cross-appeal raising it was dismissed as improper. Summary judgment was properly entered against the laches defense because there was insufficient evidence that the plaintiff had knowledge of the accused product. Summary judgment was also properly entered against a claim of joint inventorship based on a lack of corroboration and against a claim of inequitable conduct based on a lack of proof of materiality. The issue of invalidity based on the prior art was remanded in light of the Federal Circuit's new claim construction.

A full version of the decision is available here.

(Moore) Affirming summary judgment that claims were invalid where they were not entitled to an earlier priority date because the earlier application did not provide an adequate written description. Where the PTO did not consider the issue of priority, the claims of a CIP are not entitled to a presumption of support in an earlier application. In this case, the added limitation of "customer interface" was broader than what was described in the earlier application. WilmerHale represented the appellee, T-Mobile.

A full version of the decision is available here. 

(Kennelly) Affirming denial of preliminary injunction for Lanham Act claim contending that patentee had acted in bad faith in sending letters to defendant's customers accusing them of patent infringement.

A full version of the decision is available here.

(Prost) Vacating judgment of infringement. The district court erred in deciding to construe a claim terms as needing no construction because it had a well-understood definition; the district court "failed to resolve the parties' dispute because the parties disputed not the meaning of the words themselves, but the scope that should be encompassed by the claim language."

A full version of the decision is available here.

(Gajarsa) Affirming summary judgment of noninfringement but reversing summary judgment of invalidity based on indefiniteness. The claims were not indefinite for impermissibly mixing two distinct classes of patentable subject matter or because a single word was interpreted differently in different portions of a claim.

A full version of the decision is available here.

(Gajarsa) Reversing dismissal of declaratory judgment (DJ) action. Even though the patentee had granted the DJ plaintiff a covenant not to sue for infringement, that did not resolve the controversy between the parties in the Hatch-Waxman framework. Extensive discussion of the DJ standards in the ANDA context in light of MedImmune. Friedman dissents.

A full version of the decision is available here.