These are VERY ROUGH summaries of the cases argued to the Federal Circuit in August 2007. I listen to the arguments in my car – often when I am distriacted. So use these only for issue spotting, and listen to the MP3 yourself (and get copies of the briefs) if you want a 100% accurate story.
2006-1565 POSTX CORP V SECURE DATA (Newman Lourie Prost) 08-06-07 (2 of 5 stars)
The defendant previously won summary judgment of noninfringement and then sought an antitrust claim under PRE for sham litigation. The question is whether lack of a prefiling investigation necessarily creates sham litigation even if it turns out (luckily for the patentee) the suit was reasonable. In addition, the district court held that the Postx and its VC (or something like that) were not competitors, so there was no problem with them supposedly conspiring to file a sham lawsuit.
2007-1087 GP INDUSTRIES V ERAN INDUSTRIES (Newman Lourie Prost) 08-06-07
The district court enjoined the patentee from telling the defendant’s customers about their infringement. The appellant argues that the court: (1) erred in not requiring that the assertions be objectively baseless; and (2) by shifting the burden to the patentee to prove that it would succeed on its claims. There was some discussion about the standard of review for objective baselessness, where the standard at the district court was a “likelihood of success on the merits.” Judge Lourie asks what the harm is when the patentee could always sue the customers, and the appellant gives a reasonable answer. The defendant was a company started by former employees of the plaintiff, and the letters to customers alleged many wrongs including RICO violations. There were also some questions about what the injunction prohibited.
2007-1116 FOREMOST IN PACKAGING V COLD CHAIN (Rader Schall Linn) 08-06-07 (1 of 5 stars)
This is an appeal from summary judgment of noninfringement relating to some sort of package. The argument was all very fact specific and I could not understand it. Lot of discussion about the geometry of a “product cavity.”
2006-1583 DOLBY LABS V LUCENT TECHNOLOGIES (Rader Schall Linn) 08-06-07 (2 of 5 stars)
This is an appeal by patentee Lucent from a Rule 11 sanction – Lucent asserts that the defendant’s marketing literature said the products include the accused feature (Dolby AC-3 technology), but it appears that Lucent might have waited too long after receiving relevant depositions before dismissing its claims.
2006-1579 SAMSUNG ELECTRONICS V RAMBUS (Rader Schall Farnan) 08-07-07 (2 of 5 stars)
This case warms the heart of an appellate geek like me because Rambus was appealing to establish that it had no right to appeal. Specifically, the district court had made some very unfavorable findings but had ultimately refused to impose fees against Rambus, and Rambus wanted to establish that those findings would not be collateral estoppel in later suits, since those findings were not appealable. The panel tried to get both sides to admit that they were forum shopping. Rambus was represented by Richard Taranto.
2007-1091 IN RE BURROWS (Rader Schall Farnan) 08-07-07 (1 of 5 stars)
This is an appeal of an obviousness rejection for a system that generates a coupon relating to travel on a computer and stores it on the computer. The applicant asserts that this is a great advance over prior systems that actually printed the coupon. A paraphrase from the rebuttal argument: “How could the Patent Office just operate of its own whim and caprice? Aren’t we then back to where we were years ago, as just a nation of men, and not laws?”
2006-1266 ZENON ENVIRONMENTAL V US FILTER (Newman Lourie Linn) 08-07-07 (3 of 5 stars)
Appellant first argues that incorporation by reference requires great particularity – Judge Lourie seemed to think the incporation was pretty clear but related to something other than what the patentee (Zenon) wanted to incorporate. On a second issue, the appellant asserts that there was clear lexicography in the patent that should control over all other claim construction considerations. There was also a cross-appeal on claim construction, in that the district court allegedly read several limitations into the claims.
2007-1014 AMGEN V ITC (Newman Lourie Linn) 08-07-07
The question here is whether the research exemption of Section 271(e)(1) can apply to method claims that are performed outside the U.S., where the resulting drug is imported into the U.S. The is also a subsidiary question about whether the wording of Section 337 (covering ITC actions) would make the result any different than if this were a district court action.
2007-1117 US PHILIPS V IWASAKI ELECTRIC (Newman Lourie Linn) 08-07-07 (2 of 5 stars)
This is a claim construction case for a patent on halogen lamps. Th claims recite a halogen content around 10-4, and the patentee/appellant argues that such a recitation is different from, and broader than, 1x10-4 (at least to a skilled artisan in that field).
2006-1637 CAPITAL BRIDGE V IVL TECHNOLOGIES (Michel Schall Bucklo) 08-08-07 (1 of 5 stars)
This is a claim construction appeal from a summary judgment of noninfringement, and focuses around an interpretation of statements made by the applicants during prosecution. The preambles required that something be “wirelessly transmitted,” and the district court found this limitation to be vitiated. The appellant appears to argue that there nonetheless is no need for a wireless transmitter. At 7:42, after counsel made an assertion, the court asked: “That isn’t true, is it?” There is also a question of whether the appellant was raising a new issue at oral argument.
2007-1132 EON-NET LP V FLAGSTAR BANCORP (Michel Schall Bucklo) 08-08-07 (2 of 5 stars)
This is an appeal from a summary judgment that Flagstar has a license, and imposition of sanctions. The appellant argues that, to get there, the district court messed up its sua sponte construction of “document file” (or something like that) so as to not cover paper documents. The panel questions whether the district court really did construe the claims in that manner. The panel also wonders why the appellant did not ask for a Markman hearing after the district court seems to have made a claim construction on the way to reaching a decision on license. In the end, it seems that the appellee brought a broad motion for nonliability based on license, and that the appellant may have, or may not have, been on notice at some point that claim construction was going to be a subsidiary issue for the general motion.
2006-1634 CLASSEN IMMUNO V BIOGEN IDEC (Newman Moore Farnan, Jr.) (2 of 5 stars)
The main question is whether the 271(e)(1) exception for FDA preparatory activities can apply to post-approval actions that are directed to FDA reporting that is not related to safety issues. The secondary issue relates to whether the patents here are “research tools” and whether that matters. Finally, there is a question whether the claims are invalid under Section as covering a mere mental process.
2007-1199 ASTELLAS PHARMA V RANBAXY (Newman Moore Farnan, Jr.) (3 of 5 stars)
This is a double patenting case with pretty clear facts: the first patent covers a method of making a compound, and the second claims the compound. The defendant/appellant questions how a compound could possibly be nonobvious in light of the process for making the compund. Apparently, the district court had relied on the fact that the claims were in different statutory classes (though I don’t understand that point). The appellant did not believe that the requirement for focusing solely on the earlier claims made any difference, and emphasized that “same invention” double patenting was in play here. There was also some discussion about whether “effective amount” was sufficiently clear language in the prior patent. The appellee seems to suggest there is some difference between making an invention-to-invention comparison (which is okay according to the appellee) and making a claim-to-claim comparison (which is not okay). Under that logic, the appellee notes that the process and the compound are wholly different. The panel shows concern about giving the patent an improper extension of term. The appellee says it is okay, relying on the General Foods decision for the concept that the second patent can dominate the first. There’s also a debate over whether In re Freeman has been overruled.
2006-1638 Z4 TECHNOLOGIES V MICROSOFT (Lourie Linn Bucklo) 08-09-07 (2 of 5 stars)
The appellant leads with a claim construction issue, asserting the district court erred in construing “user” to cover people and computers, where the claims and specification distinguish users from computers. There is also a Section 102(g) issues here about a product initially developed outside the U.S., sold in Brazil, but reduced to practice before the critical date in the U.S. Also, the district court had instructed the jury that corroboration must come form a single document, and z4 suggested that an inventor needs to be named for 102(g), and that it is not enough to show that an invention existed (and that there thus was necessarily a prior inventor). Judge Bucklo asked whether the errors in instruction might have been harmless. There is also a Section 271(f) issue in this appeal (although z4 says there is no 271(f) issue). Disclaimer: F&R represented Microsoft in this appeal.
2007-1034 INTL GAMCO V MULTIMEDIA GAMES (Rader Friedman Moore) 08-09-07 (2 of 5 stars)
This is yet another case asking whether an exclusive licensee had sufficient rights to bring suit (i.e., to have standing). Here, the assignment or license seemed to be territorial, though varying, i.e., wherever the New York Lottery operates. This was an interlocutory appeal.
2007-1057 CARITAS TECH V COMCAST (Newman Rader Prost) 08-10-07 (1 of 5 stars)
This is a claim construction appeal that relates to teleconferencing, and centers around fact-specific issues that I could not understand from the argument. Apparently, the main question is whether a “telephonic connection” is limited to an end-to-end connection, i.e., whether it is from one phone to another phone, or whether it is from a phone to a switch (which is not an endpoint).
2007-1074 SCHWARZ PHARMA V PADDOCK LABS (Michel Lourie Moore) 08-10-07 (2 of 5 stars)
The district court found that prosecution history estoppel blocked the DoE – and one question is whether this is a factual issue or a legal issue. The technology relates to the use of magnesium oxide as a stabilizer against cycloization and discoloration (sp?). Apparently, there was general interchangeability, but perhaps not interchangeability for the particular purpose here. There are also questions of whether foreseeability is a legal or factual issue.
Great work.
Posted by: Blithe | October 29, 2008 at 12:07 AM