Oral Argument Summaries - November 2008

This post contains oral argument summaries from the Federal Circuit's November 2008 sitting.  I listen to the arguments on planes or in my car, and I do not write the summaries until later, so please use these summaries only for issue spotting, and check the actual MP3's if you want complete accuracy.

2007-1487 Clearvalue v. Pearl River (Newman Schall Dyk) 11-03-08 (2 of 5 stars)

A judge in the E.D. Tex. imposed death penalty sanctions and $2.7 million in fees and costs on the defendant and its attorney for failing to produce test data about the accused product.  The basis for refusing production was work product immunity but at most the testing had been done for another case regarding product liability issues.  The appellants (attorney and company) seem to challenge the size of the sanction more than the existence of the sanction.

2007-1578 Sumitomo Mitsubishi v MEMC Electron (Newman Plager Schall) 11-04-08 (2 of 5 stars)
This is an antitrust case where apparently the patentee’s patents were found invalid for lack of enablement and the accused infringer argues that the patentee also fraudulently asserted a false claim for priority.  Most of the argument revolves around the Fed Cir’s sua sponte raising of its jurisdiction because all of the original patent claims had been dismissed without prejudice and all that remained was an antitrust claim.  If that claim depended solely on sham and Walker Process bases the Fed Cir has jurisdiction but if the defendant alternatively pled a claim for violations from the patentee’s patent pooling the Fed Cir would not have jurisdiction.  On the merits there was a lot of discussion of the difference between the intent requirement for inequitable conduct and the intent requirement for fraud.  The patentee emphasized that much of its case was solid (even if its enablement position was problematic) thus indicating no fraudulent intent.  The district court apparently found that there was no fraudulent intent.

2008-1332 Clock Spring v. Wrapmaster (Bryson __  Dyk) 11-04-08 (1 of 5 stars)
This is an obviousness appeal and the patentee-appellant argues that the Fed Cir should consider certain new objective indicia evidence that was added on appeal – which the appellant asserts was first made relevant by a recent Fed Cir opinion (Cygnus).  There is also an issue regarding the experimental use exception to the on sale bar where the magistrate found the patent invalid but the district court found it valid.  The Fed Cir questions whether the asserted experimentation was aimed at the invention as claimed as opposed to being directed to a form of the invention that was uncertain with respect to its operability.

2008-1124 Acumed v. Stryker (Mayer Lourie Gajarsa) 11-04-08 (3 of 5 stars)
This is an appeal over the entry of a permanent injunction.  Appellant Stryker’s main argument is that the district court gave too little weight under eBay to Acumed’s granting of licenses to its patent to other companies and to the public interest of having access to healthcare solutions. (Stryker asserts that the Acumed nail which would replace the enjoined Stryker nail poses a health risk.)  Acumed says Stryker did bad anticompetitive things.

2008-1125 Dippin Dots v Mosey (Mayer Lourie Gajarsa) 11-04-08 (3 of 5 stars)
This is a follow-up appeal where the question is whether $4.2 million in fees should be awarded for an exceptional case where the patentee failed to tell the PTO about a prior public use but the Fed Cir in a prior appeal found that there was insufficient evidence of “fraud.”  On remand the district court explained that it had found inequitable conduct fraud not fraud fraud (or at least that's what it sounds like from the argument).  The patentee argues that the district court ignored the prior Fed Cir decision.  There is also some question about how much can be awarded when a patent case succeeds for a defendant but a corresponding antitrust counterclaim does not succeed.

2008-1283 Mathworks v. Comsol (Rader Linn Moore) 11-04-08 (1 of 5 stars)
This is a claim construction and claim differentiation case:  the district court apparently limited “ranking” to “fitness ranking” in a software invention even though a dependent claim related to fitness ranking.  The appellee argues that the patentee used a narrow meaning throughout the specification and the prosecution history.  There is also discussion about whether a term can have an “ordinary” meaning standing alone without first figuring out its meaning within the patent.  There is also some question whether claim differentiation creates a presumption or is merely a guideline (and only in independent-dependent situations).

2008-1073  Boston Scientific v. Cordis Corp. (Lourie Rader Prost) 11-05-08 (3 of 5 stars)
A jury found that Cordis’ Cypher drug-coated stent infringes BSC’s patent.  Cordis first asserts that the district court erred in construing “non-thrombogenic coating” in absolute terms rather than in terms relative to the response of a bare metal stent.  Separately the claim requires an implantable medical device with a drug-free outer coating.  Cordis applies a drug-free outer coating but the drug immediately begins leeching into this outer coating (which is subsequently NOT drug-free).  So the question is whether the Cypher is “implantable” (there seems to be a potential distinction between physical or technical implantability on the one hand and medical implantability on the other) and/or a “medical device” in the short time period before the leeching occurs and before it is sterilized.  There is also an issue regarding whether the patents would have been obvious though this issue seems to be very case-specific.

2008-1314 Takeda Pharma v Teva Pharma (Michel ___ Ware) 11-05-08 (2 of 5 stars)
The defendant-appellant argues that Judge Robinson from D. Del. who has tried dozens of patent cases erred in balancing materiality and intent when she found no inequitable conduct.  This seems like a steep climb.  The drug relates to lazamprezol and ameprozol anti-ulcer medicine (sp?).

2008-1129  WaveTronix v.  EIS Electronic (Newman Schall Patel) 11-05-08 (1 of 5 stars)
This is a claim construction appeal where EIS challenges the construction of “probability density function estimation (PDFE)” and “defining lanes (on a roadway).”  There was no Markman process or claim construction order but there was a 14-day pre-trial conference that included live expert testimony.  The substantive issues on claim construction were confusing (to me at least) and seemed very case-specific.  The invention relates to methods of measuring traffic levels on roadways.  The defendant asserts that the patentee’s system is precise and complex while its system is simpler though less precise.

2008-1123 Informatica Corp. v. Business Objects (Mayer Gajarsa Prost) 11-06-08 (1 of 5 stars)
The main issue is the construction of “transformation object” in a software patent.  Business Objects was found by a jury to infringe and it asserts on appeal that the magistrate changed the claim construction in the middle of trial—though it is objecting only to the construction and not to the process of changing the construction mid-trial.  Business Objects seems to assert that its transformations are performed by something other than objects and that Informatica expanded the concept of an object to include loosey-goosey stuff that is not really an object.

2008-1416 Applied Medical v US Surgical (Mayer Gajarsa Prost) 11-06-08 (3 of 5 stars)
Applied (the patentee) argues that it should have a new trial because the district court erroneously told the jury that it could consider the “outer portions” of the accused device even though those outer portions were not part of the corresponding structure for the means-plus-function limitation in the case.  The Fed Cir already identified the proper corresponding structure in a prior appeal.  The legal question is how much consideration if any can be given to non-corresponding structures that may have some effect – in a way that might relate to the corresponding structure -- on the way the accused device operates.

2008-1167 Lacks Indus. V. McKechnie Vehicle (Michel Clevenger Moore) 11-06-08 (3 of 5 stars)
Lacks appeals from a finding on summary judgment that it suffered an on sale bar arguing that it was trying to promote interest in its invention but was not making offers for sale and in any event the evidence does not indicate what exactly was offered for sale (i.e. that there was no proven “nexus” between the thing offered for sale and the patent claims).  There is some discussion about the proper standards of review for grants and denials of summary judgment and whether the Fed Cir could grant summary judgment for the patentee on this issue (i.e. whether it could impose a 180 degree reversal).

2008-1279 Synthes (USA) v. GM DOS REIS (Schall Friedman Bryson) 11-07-08 (4 of 5 stars)
This is a personal jurisdiction case where the defendant brought allegedly-infringing medical device products into the country for a trade show.  The defendant claims it only showed the products to foreign buyers because it does not yet have FDA approval – and thus it did not infringe inside the country.  The main question is thus whether bringing the products into the country for a not-fully-commercial purpose amounted to “importing” the products so as to trigger personal jurisdiction under Beverly Hills Fan.  There is also some concern about how much a court needs to review the merits of a case when analyzing personal jurisdiction – i.e. does it merely need to determine that the plaintiff’s allegations are non-frivolous or must it do more?  This should be a good case because it’s an interesting issue with some of the smartest judges around.