PATracer

Late Terminal Disclaimer Was Too Late?

2009-1032 Boehringer Ingelheim v. Barr Labs
D/NJ 05-Cv-700 and 05-Cv-854
Judge Joseph J. Farnan, Jr.

An interesting appeal concerning the interplay of terminal disclaimers, restrictions, and patent extensions.  The case involves efforts to market a generic version of pramipexole dihydrochloride, FDA approved for the treatment of idiopathic Parkinson's disease and Restless Leg Syndrome (RLS).  Defendants alleged that the asserted '812 patent was invalid for non-statutory double-patenting based on Boehringer's related '086 patent, which expired in 2006.

During trial and just before closing arguments, Boehringer filed a terminal disclaimer for the '812 patent, disclaiming the statutory term after expiration of the '086 patent.  It then argued that this not only avoided the double-patenting defense but also that the '812 was still in force due to an extension to that patent's term under § 156.  The Court disagreed, finding the terminal disclaimer ineffective and that the asserted claims of the '812 were invalid.  Aaron Barkoff at the Orange Book Blog previously wrote about the district court's decision here.

Oral argument is scheduled for Monday, June 1, 2009 at 1:00 P.M., Courtroom 402.

Cartner Takes Issue With Invalidating Claim Construction

2009-1097 Cartner v. Alamo Group
ND/OH 1:07-CV-1589
Judge Lesley Wells

A relatively straight-forward appeal of claim construction related to 5,197,284, claiming a system and method for decelerating a hydraulic motor.  Following construction in defendant's favor, plaintiff Cartner stipulated to invalidity and appealed.

Oral argument is scheduled for Monday, June 1, 2009 at 10:00 A.M., Courtroom 201.

En Banc: 271(f) and Cardiac Pacemaker

2007-1296 Cardiac Pacemaker v. St Jude
SD/IN 96-CV-1718
Judge David F. Hamilton

The Federal Circuit is hearing the case, en banc, directed to a single question:

Does 35 U.S.C. § 271(f) apply to method claims, as well as product claims?

The panel relied on Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005) to answer in the affirmative, but some (St Jude, amici) argue that the Supreme Court's decision in Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007)--finding that software instructions were not "components"--mandates a different result.

Oral argument is scheduled for Friday, May 29, 2009 at 2:00 P.M., Courtroom 201. 

In Brief: Purechoice v. Honeywell

2008-1482 Purechoice v. Honeywell
ED/TX 06-cv-00244
Judge T. John Ward

Purechoice appeals from the judgment of Judge Ward construing certain claim terms of RE38,985 as ambiguous and the claims invalid for indefiniteness.  The patent relates to a remote environmental monitoring system that collects air quality data about a site.  We previously covered the case here, as did Michael Smith from EDTexweblog.

Oral argument is scheduled for Tuesday, March 31, 2009 at 10:00 A.M., Courtroom 203.  When it becomes available, an mp3 of the oral argument should be here.

In Brief: Blackboard v. Desire2Learn

2008-1368 Blackboard v. Desire2Learn
ED/TX 9:06-CV-155
Judge Ron Clark

Cross-appeals involving Blackboard's 6,988,138 patent. The jury found Desire2Learn infringed claims 36-38, also finding those claims valid.  The court found claims 1-35 invalid for indefiniteness.  The '138 is also currently in reexams, with the PTO having preliminarily rejected claims 1-44.

Oral argument is scheduled for Tuesday, March 31, 2009 at 10:00 A.M., Courtroom 201.  When it becomes available, an mp3 of the oral argument should be here.

Court Maintains License Pending Coverage Dispute

2009-1168 Fairchild Semiconductor v. Third Dimension (3D)
D/ME 08-158
Judge D. Brock Hornby

Patentee/declaratory-judgment defendant 3D appeals from the grant by Judge D. Brock Hornby of a preliminary injunction prohibiting it from terminating a patent license to Fairchild.  The license relates to patent 5,216,275 and a related Chinese patent directed to superMOSFET technology for silicon semiconductors.

Court Rejects Collateral Attack On Patent Ownership

2009-1167 Enovsys v. Nextel
CD/CA 06-cv-5306
Judge Ronald Lew

Defendant Nextel appeals from the order and judgment of Judge Ronald Lew affirming the jury's verdict of infringement and $2.78 million in damages.  Enovsys asserted 6,560,461 against Nextel's iDEN system, relating to a system to protect and manage the disclosure of the precise location of a user's cell phone (e.g., the phone's GPS position).

Foreign Invention Sneaks In Under § 102(g)(2)

2009-1161 Solvay v. Honeywell
D/DE 06-557
Judge Sue Robinson

Plaintiff Solvay appeals from the grant of summary judgment of Judge Sue Robinson finding Solvay's 6,730,817 invalid under § 102(g)(2).  The court found that Honeywell--working with Russian scientists--had invented the process for manufacturing 1,1,1,3,3-pentaflouropropane (HFC-245fa, a blowing agent for rigid insulating foams) before Solvay.   The court concurrently found that Honeywell infringed claim 1 of the '817, although that summary judgment ruling has no immediate impact due to the invalidity.

Court Grants Injunction, Then Stays Case Pending Re-Exam

2009-1158 Automated Merchandising v. Crane
ND/WV 08-cv-97
Judge John Preston Bailey

Defendants appeal from the grant of a preliminary injunction by Judge John Bailey against the sale of their new vending machines.  The 4 patents in suit relate to "optical vend detection systems" in vending machines, devices that are supposed to determine whether or not the selected item has actually dispensed and, if not, refund the money.  No more rocking the machine to free stuck Frito's. 

Post Infringement Reasonable Royalty

2009-1154 Amado v. Microsoft
CD/CA 03-242
Judge David Carter

Plaintiff Amado appeals from the order of Judge David Carter setting the reasonable royalty for Microsoft's post-verdict sale of infringing products and reducing the number of units for which the royalty is owed. 

Court Sticks Needle Patent With Invalidity

2009-1152 MBO Labs v. Becton
D/MA 03-cv-10038
Judge Joseph Tauro

Plaintiff MBO appeals from Judge Joseph Tauro's grant of summary judgment finding that RE 36,885 invalid for violating the recapture rule, 35 U.S.C. § 251. 

Technical Difficulties

Which is a term of art meaning "our IT people don't know what's wrong with the document server."  The server where we store the pdfs of court orders, briefs, etc. isn't responding, so most of the "More reading" links will not work.  I have set up a temporary (hopefully) Google Site on which to store new documents until IT gets things fixed.

UPDATE: The server is back up for now.  Send me an email if you have problems or find any broken links.

And now for something completely different.

KSR Breaks Bundle Splitting Patent

2009-1151 Geo Martin v. Alliance Machine
ND/CA 07-cv-692
Judge William Alsup

Plaintiff Martin appeals the grant by Judge William Alsup of defendant's Rule 50 motion finding 6,655,566 invalid as obvious.  The ruling comes after a 2 week jury trial resulted in a hung jury.  The court employed KSR and found the patent, directed to a bundle breaker for breaking corrugated cardboard, roofing shingles, etc., merely an obvious combination of known elements performing known functions.  Although there was some evidence of nonobviousness in the secondary considerations, the court dismissed these as minor or inconsequential.

Catching Up-Week of January 3, part 2

If part 1 was the ED/Michigan post, part 2 is SD/New York as 2 of the 3 cases come from there.  2009-1146 (SD/NY) is summary judgment of non-infringement; 2009-1147 (SD/NY) is summary judgment of equitable estoppel; and 2009-1149 (D/DE) is an "exceptional" finding and award of attorney's fee.

Catching Up-Week of January 3, part 1

Judge Avern Cohn and his clerks must have been busy last fall as a couple appeals from the first week of 2009 are from his court.  FYI, later this year Judge Cohn will hit 30 years on the bench in the Eastern District of Michigan. 

The four cases in Part 1 consist of 3 claim construction cases and one case on damages.

Catching Up-December 2008

December cases...

Catching Up-November 2008

Okay, so my efforts to catch up have fallen behind schedule, and now I resort to merely listing the appeals filed in November and December--then I can actually start covering the January cases.  Here are November's cases:

Catching Up-Week of October 27th

Another is the series of posts attempting to catch up.  A couple marking cases: one sufficiency and one false, and inventorship.

Third Parties And Protective Orders-Can You Handle The Truth?

In patent cases non-parties are regularly called upon to produce documents or give deposition testimony--material or information that is often confidential to some degree.  Most of the time this discovery goes off without too much trouble: a subpoena is issued, lawyers negotiate, and the discovery had.  Typically the producing party takes advantage of the Protective Order in the action, designating the documents or deposition testimony as "Confidential" or "Attorneys Eyes Only" or with some similar language.

But what happens when there is a problem later in the case, especially when another party challenges the designation or violates the protective order?  I am involved in a case right now in the District of Colorado which highlights a lurking danger for these non-parties.

When You Need A Friend At Court

Everyone needs friends.  And what better time to have a friend with you is there than when arguing at the Federal Circuit, especially if your friend is also a "friend of the court," or amicus curiae?

I have worked on quite a few amicus briefs, both in private practice and during law school while working at the Washington Legal Foundation.  They are (usually) fun to write and are (usually) great to have on your side because they can make arguments or points that you can't or won't (or don't have room to include).

However, I never gave much thought to finding an amicus to join my side in an appeal until my opponents in a pending Federal Circuit case started trolling around looking for one (or two, or three....) to help them.  More on that in a later post, but that process got me thinking about who is filing these briefs and how to go about getting them to help you.

Catching Up-Week of October 20th

As part of our recently announced plan to "catch-up" on coverage of cases, here are brief summaries of the appeals filed during the week of 20 October 2008 that we didn't already cover.

I expect a series of these Catching Up posts over the next few weeks until we get through December's filings, and then we will resume our regular coverage.  Josh has also promised some On The Radar posts soon, so the pressure is on.

Coming Soon To PATracer

Happy New Year, and thanks to everyone with reads, subscribes, comments, and otherwise uses PATracer.  When we started the site nearly a year ago we wanted to report on pending Federal Circuit patent cases--providing information on newly filed cases, the briefs, and oral argument.

With 2008 in the books, Josh and I have reviewed PATracer and feel a few changes are needed to better meet our goals.

Robert Cohn Was Once Middleweight Boxing Champion Of Princeton

2009-1031 Marrin v. Griffin
CD/CA 07-239
Judge George Wu

Patentees' Jeff and Claudia Griffin appeal from Judge George Wu's grant of summary judgment finding claims 1-4 of their 5,154,448 patent invalid under 102 and 103.  The patent relates to a label that allows users to write without using a pen or the like--Marrin is the founder of Etch-It, a company that makes cups and other products with a label on which you can write using your finger.

In this case involving the Griffins I almost went with a photo from Family Guy--e.g.,  Brian scratching something--but I could use a Family Guy shot every day (hmm, now there is a theme for next week).  But how often can you use John Waters, a fellow film maker whose early 1980's Polyester had scratch-and-sniff cards and Divine?

Christmas Won't Be Christmas Without Any Presents

2009-1027 Kara Technology v. Stamps.com
CD/CA 05-cv-1890
Judge Consuelo Marshall

Plaintiff Kara appeals from the orders of Judge Consuelo Marshall denying its post-trial motions and from the jury verdict of non-infringement in favor of Stamps.com.  The asserted patents were 6,505,179 and 6,735,575.

Stamps.com is an online postage stamp business, essentially an alternative to a stamp metering machine.  The accused product is Netstamps pre version 5.

Opening line from Little Women, Louisa May Alcott.  Nothing to do with the case, but I am writing this on Christmas Eve . . . . and I still have some shopping to do.

"Now What I Want Is, Facts." On The Radar: October 2008

Hard Times by Charles Dickens. 

Which brings us to the cold, hard facts of October 2008 new filings of patent cases (aka NOS 830 in PACER-speak).

An interesting item is Sanofi-Aventis v. Genentech, filed in the Eastern District of Texas.  I have not seen too many pharma cases down in Marshall et al.--probably because a reputation for a fast docket and big damages is not meaningful to pharma patentees already enjoying an automatic 30 month stay (and not having much in the way of money damages).   This case is a little different as it is not the typical ANDA action with pioneer versus generic, but rather a patentee against a former licensee who apparently did not or will not stop selling. 

I wonder if more pharma cases would go down to ED Texas if it slowed down . . . or offered a slow, pharma track?  Venue could be a problem in ANDA cases though.

All This Happened, More Or Less.

2009-1024 Responsible Me v. Evenflo
SD/FL 06-61736
Judge Daniel Hurley

Plaintiff Responsible Me appeals from the summary judgment decision of Judge Daniel Hurley finding that Evenflo did not infringe 7,134,714, generally directed to a detachable sub-tray for use with trays from car seats, highchairs, strollers and similar seats.

Despite the post's title, not much happened in this case, especially when compared to many other patent cases such as the Taurus.  Still, I had to use it because it is a great line, opening Kurt Vonnegut's Slaughterhouse-Five.

I also like the opening line from Feed by M.T. Anderson, courtesy of my nephew's collection.  Its a "dystopian novel of the postcyberpunk genre" where cerebral Internet implants pipe pop-up ads directly to your brain:

We went to the moon to have fun, but the moon turned out to completely suck.

This Is A Blog Post About A Patent Case

2009-1023 Amgen v. ARIAD
D/DE 06-259
Judge Mary Pat Thynge

ARIAD appeals from the Orders of Judge Mary Pay Thynge granting Amgen summary judgment of non-infringement on ARIAD's US Patent No. 6,410,516.  This is the same patent, directed to inhibiting or reducing NF-κB activity in cells, that ARIAD successfully used against Lilly, reported here.

The Court's opinions begin, "This is a patent case."  While not as compact as "Call me Ishmael," it is still a classic opening line, although it probably should be limited to use in patent cases. 

Here are a few other great opening lines of literature with the potential for judicial use:

In our family, there was no clear line between religion and fly fishing.  Norman Maclean, A River Runs Through It.  Maybe a separation of church and state case. 

The village of Holcomb stands on the high wheat plains of western Kansas, a lonesome area that other Kansans call "out there."  Truman Capote, In Cold Blood.  I guess pretty much any case from that tiny plot of Finney County.

It was a pleasure to burn.  Ray Bradbury, Fahrenheit 451.  Arson.

A screaming comes across the sky.  Thomas Pynchon, Gravity's Rainbow.  Struck by falling satellite or a catapult accident . . . hey, it happens.

Marley was dead, to begin with.
Charles Dickens, A Christmas Carol.  A murder.  Of Marley preferably, just to have the sentence make sense. 

Stately, plump Buck Mulligan came from the stairhead, bearing a bowl of lather on which a mirror and a razor lay crossed.  James Joyce, Ulysses.  Um, a shaving mishap . . . on 16 June?

Amgen Scores TKO On EPO

2009-1020 Amgen v. Hoffman-La Roche
D/MA 05-12237
Judge Willam Young

Roche appeals from the judgment of Judge William Young finding that it infringes U.S. Patent Nos. 5,441,868, 5,547,933, 5,618,698, 5,621,080, 5,756,349, and 5,955,422 relating to Amgen’s recombinant erythropoietin (“EPO”).  The Court also entered a permanent injunction.

The Court's Order checks in at 150 pages so, rather than summarizing it myself, I thought I would let the Court do its own summary.

Some Good (Patent) News For Dow Jones

2009-1019 Netcurrents v. Dow Jones
CD/CA 07-4027
Judge John Walter

Plaintiff Netcurrents appeals from the order of Judge John Walters granting Dow Jones summary judgment of non-infringement on the asserted claims of 6,260,041 and 6,332,141.  These patents are directed to a fast internet real-time search technology allowing users to index sites based on users selected parameters, and Dow Jones' Factiva.com range of products were accused....now if they can only do something about the Industrial Average.

Muscle Mag Ads Invalidate Supplement Claims

2009-1018 Iovate v. Bio-Engineered Supplements
ED/TX 07-cv-46
Judge Ron Clark

Plaintiff Iovate appeals from the order of Judge Ron Clark finding certain claims of 6,100,287 invalid as anticipated under § 102 based on TwinLabs and Weider advertisements and products.  Summary judgment as to other claims was denied, but Iovate stipulated to dismissal of those claims in order the appeal the order.   The patents are direct to a method for enhancing muscle performance and recover via a ketoacid and an amino acid, where the amino acid is cationic or dibasic.

The application of § 102 and the prior art ads to the claims is relatively straight forward, but the court's discussion of enablement in the § 102 context versus under § 112 is interesting.

Qualcomm Sanctioned For Contempt Of Injunction

2009-1015 Broadcom v. Qualcomm
CD/CA 05-467
Judge James Selna

Qualcomm appeals from the Order of Judge James Selna finding it in contempt of Court for failing to make certain Sunset Royalty Payments to Broadcom under the terms of the Permanent Injunction.  The royalties related to the Q-Chat technology and Broadcom's 6,389,010 patent.

In September, the Federal Circuit upheld the findings of infringement on the '010 and another Broadcom patent, but reversed the infringement verdict on the 5,657,317 patent and found it invalid.  The oral argument was covered by us here.

Medtronic, Abbott, Both Have Something To Appeal

2009-1014, -1038 Advanced Cardiovascular v. Medtronic
D/DE 98-80-SLR
Judge Sue Robinson

Both sides appeal from the verdicts, orders and judgment from Judge Sue Robinson's court finding that Medtronic infringes the so-called Lau patents (including 6,432,133), there was no inequitable conduct in procuring the Lau patents, but also declining to enter a permanent injunction.  The case involved various expandable, bare-metal stents.

This case has had a little bit of everything, including two previous trips to the CAFC, party realignment, and an arbitration.  But hey, its only been pending 10.5 years.

Criticism Of Prior Art In Patent Limits Claims Literally And By Equivalence

2009-1006 Edwards Lifescience v. Medtronic
ND/CA 03-3817
Judge Jeffrey White

Plaintiff Edwards Lifescience appeals from the grants of summary judgment of non-infringement by Judge Jeffrey White in favor of defendants Cook Inc. and W.L. Gore.  The accused products are various types of endovascular stent grafts used to treat abdominal or thoracic aortic aneurysms.  Cook sponsors a web site with a description of its products and a short animation of the procedure.

The key term on summary judgment was claim requirement of "malleable wires."  The court construed this to mean that the wires had to be physically expended into contact with the aorta rather than expanding by virtue of their own resilience.

[Sealed] Beats [Sealed] Because of [Sealed]

2009-1013  Laserfacturing v. Daimler Chrysler
SD/TX 7-cv-00207
Judge Melinda Harmon

Laserfacturing appeals from a sealed judgment and sealed order issued by Judge Melinda Harmon ruling on a bunch of sealed motions filed by Daimler Chrysler.  The asserted patent is 5,595,670, directed to a method of high speed welding.   

On its face this is perhaps the most egregious abuse of sealing documents in all the patent cases I have reviewed--even the Final Judgment is sealed.  Perhaps things are either (1) so bad that everyone is embarrassed to have it public, or (2) contains the secret of Chrysler's stellar financial and automotive success.  Seriously, it had better contain the formula for Coke®, workable cold fusion, AND next week's PowerBall numbers. 

On the Radar: September 2008

I am fresh off my panel appearance at the Center for American and International Law's 46th Annual Conference on Intellectual Property Law in Plano, Texas.  The panel "All the News That's Fit to Blawg" was moderated by Bruce Sostek of Thompson & Knight (Dallas) and included:

Stephen R. Albainy-Jenei • Patent Baristas, Frost Brown Todd (Cincinnati)
Kyle B. Fleming • PATracer, Renner Otto Boisselle & Sklar (Cleveland)
Joe Mullin • The Prior Art, IP Law & Business Magazine (San Francisco)
Michael Smith • EDTexweblog, Siebman, Reynolds, Burg, Phillips & Smith (Marshall)
Peter Zura • The 271 Patent Blog, Katten Muchin Rosenman (Chicago).

Although I could not stay for the entire conference, the first day was outstanding (not even including my panel!), with Michael Smith providing on-site coverage.  I had a great time, really enjoyed talking to the other bloggers, and hope to get invited back (hint to Bruce).

Anyway, with Josh über busy I thought I would sub-in and get the September edition of On the Radar published.  New writer, same old story:  overall filings were down again and the usual suspects remain atop the leader board. 

I am fresh off my panel appearance at the Center for American and International Law's 46th Annual Conference on Intellectual Property Law in Plano, Texas.  The panel "All the News That's Fit to Blawg" was moderated by Bruce Sostek of Thompson & Knight (Dallas) and included:

Stephen R. Albainy-Jenei • Patent Baristas, Frost Brown Todd (Cincinnati)
Kyle B. Fleming • PATracer, Renner Otto Boisselle & Sklar (Cleveland)
Joe Mullin • The Prior Art, IP Law & Business Magazine (San Francisco)
Michael Smith • EDTexweblog, Siebman, Reynolds, Burg, Phillips & Smith (Marshall)
Peter Zura • The 271 Patent Blog, Katten Muchin Rosenman (Chicago).

Although I could not stay for the entire conference, the first day was outstanding (not even including my panel!), with Michael Smith providing on-site coverage.  I had a great time, really enjoyed talking to the other bloggers, and hope to get invited back (hint to Bruce).

Anyway, with Josh über busy I thought I would sub-in and get the September edition of On the Radar published.  New writer, same old story:  overall filings were down again and the usual suspects remain atop the leader board. 

Sanctions, Jail, Possible For Refusing Debtor's Discovery

2009-1005 US Philips v. Int'l Norcent
CD/CA 06-1366
Judge Manuel Real

Defendant Jennifer Long appeals from the order of Judge Manuel Real sanctioning her for refusing to comply with subpoena, court orders, and making false statements under oath.  This case is related to 2008-1385 (covered by us here) in which she appealed the jury's verdict finding her joint and severally liable for over $12 million (plus trebling, attorney fees, and interest).  The current sanctions relate to a debtor's exam and discovery efforts by US Philips towards collecting on the judgment.

OK To Heat Accused Product To Show Infringement

2009-1001 Gemtron v. Saint-Gobain
WD/MI 1:04-cv-0387
Judge Avern Cohn

Saint-Gobain appeals from the orders and judgment of Judge Avern Cohn and jury verdict finding that Saint-Gobain infringed 6,679,573 directed to a refrigerator shelf.  Saint-Gobain raises the usual JMOL and post-trial arguments, but the most substantive (based on length of discussion by the court) relates to infringement and whether the accused product was "altered" to show infringement.

Also, this is the first CAFC appeal filed in the 2009 term:  "The new phone books are here!"

Federal Circuit To Revisit Scope Of Akazawa

2008-1606 Sky Tech. v. SAP AG
ED/TX 06-cv-440
Judge David Folsom

Defendant SAP was granted leave by the Federal Circuit (2008-m879) for an interlocutory appeal of Judge David Folsom's order determining that, by operation of Massachusetts state law, a security interest default and foreclosure sale transfers title to a secured patent even in the absence of any assignment in writing pursuant to 35 U.S.C. § 261.  If the Federal Circuit reverses, Sky would apparently lack standing to assert 6,141,653, 6,336,105, and 6,338,050.

Pressure Products Wins Medical Device Verdict

2008-1602 Pressure Products v. Quan Emerteq
ED/TX 06-cv-121
Judge Ron Clark

Defendant Quan Emerteq (aka Enpath) appeals from the jury verdict before Judge Ron Clark finding Pressure Product's 5,125,904 and 5,312,355 valid and infringed (but not willfully).  The jury awarded approx. $1.1 million.  As usual, Michael Smith at EDTexweblog provided excellent coverage of the final judgment here.

As also seems usual for an ED/Texas case, the court's reasons for denying Enpath's JMOL were given orally (and the transcript is not yet available) rather than in a written opinion, but Enpath complained in its motion about (shock) claim construction and invalidity.  Not much more can be gleaned about the specific issues--and its yet another case with a lot of filings under seal, including the briefing on pre-judgment interest and attorney fees.  You can get Enpath's JMOL here.

In Brief: Lacks Indus. v. McKenzie Wheel

2008-1167 Lacks Indus. v. McKenzie Wheel
ED/MI 96-CV-75692
Judge John Feikens

An on-sale bar case where the court concluded that plaintiff’s product quotes—while not likely to be accepted without significant negotiations, back-and-forth, etc.--could have been accepted to create a binding contract, and thus qualify under Group One and establish an on-sale bar.

Oral argument is scheduled for Thursday, November 6, 2008 at 10:00 A.M., San Francisco Federal Court.

Court Trims Daiichi's Award Of Costs

2008-1600 Ortho-McNeil v. Mylan Labs
ND/WV 02-cv-32
Judge Irene Keeley

Defendant Mylan appeals from Judge Keeley's order awarding plaintiff Daiichi costs in the matter.  The costs issue has been pending for quite a while--the district court ruled in 2004 that the asserted patent was not invalid or unenforceable, and the Federal Circuit affirmed in 2005.  The various parties had been attempting to resolve the costs issues, but Mylan and Daiichi could not reach an agreement.

In Brief: Takeda v. Teva

2008-1314 Takeda Pharma v. Teva Pharma
D/DE 06-cv-33
Judge Susan Robinson

An inequitable conduct case regarding the inventors' failure to disclose certain test results during prosecution of 4,628,098.  The district court found the patent enforceable.  The '098 patent covers lansoprazole, marketed by plaintiffs as Prevacid® for gastric ulcers.  The case was previously covered here.

Oral argument is scheduled for Wednesday, November 5, 2008 at 10:00 A.M., San Jose Federal Court.

Abuse Of Discretion Returns To Preliminary Injunction Review, At Least For One Case

For those that followed our previous posts on the Federal Circuit's unsettled review of preliminary injunction appeals (here, here, here and here), the Court's recent decision in Abbott Labs v. Sandoz, sheds some more light on the conflict within the CAFC.  Perhaps more than any other current patent issue, a PI appeal may hinge almost completely on which panel members you draw.

Judge Newman, writing for the majority (Newman, Archer: Gajarsa dissenting), starts with the standard of review:

On appellate review of the grant of a preliminary injunction, the question "is simply whether the issuance of the injunction constituted an abuse of discretion." Doran v. Salem Inn, 422 U.S. 922, 932 (1975). "It is well settled that the granting of a temporary injunction, pending final hearing, is within the sound discretion of the trial court; and that, upon appeal, an order granting such an injunction will not be disturbed unless contrary to some rule of equity, or the result of improvident exercise of judicial discretion." Deckert v. Independence Shares Corp., 311 U.S. 282, 290 (1940). Abuse of discretion is established "by showing that the court made a clear error of judgment in weighing relevant factors or exercised its discretion based upon an error of law or clearly erroneous factual findings." Novo Nordisk of North America, Inc. v. Genentech, Inc., 77 F.3d 1364, 1367 (Fed. Cir. 1996). See Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (en banc) (“A district court abuses its discretion when its decision is based on clearly erroneous findings of fact, is based on erroneous interpretations of the law, or is clearly unreasonable, arbitrary or fanciful.”). [Opinion, p. 4.]

While reciting this standard might not be newsworthy, actually following it is.

Claims Not Obvious Over Prior Art Aren't Enabled By That Art

2008-1594 Janssen Pharma v. Teva
In re: '318 Patent Infringement Litigation
D/DE 05-356
Judge Sue Robinson

Plaintiff Janssen appeals from the judgment of Judge Sue Robinson, after a bench trial, finding 4,663,318 invalid as not enabled under § 112 ¶ 1.  The patent relates to the treatment of Alzheimer's disease with galanthamine and is sold by Janssen as Razadyne®.  This is a consolidation of approximately 7 cases by Janssen against various ANDA filers--Teva was the first lawsuit and Purepac appears to have filed the first ANDA.  Defendants conceded infringement and tried invalidity.

In Brief: Mathworks v. Comsol

2008-1283 Mathworks v. Comsol
ED/TX 06-cv-334
Judge Leonard Davis

A claim construction appeal by Mathworks related to 7,051,338 and the parties' respective MATLAB® and COMSOL Script® software programs.  Mathworks essentially stipulated to non-infringement the court construed the term "rank" and "ranking" to require placing the method signatures in an ordered manner relative to one another.

Oral argument is scheduled for Tuesday, November 4, 2008 at 10:00 A.M., Santa Clara University School of Law.

In Brief: Dippin' Dots v. Mosey

2008-1337, 1125 Dippin' Dots v. Mosey
ND/TX 3:96-cv-1959
Judge Thomas Thrash, Jr.

A case presumably on its last round as plaintiff appeals from the award under § 285 of attorney fees.  Dippin' Dots lost at trial, lost its trade dress appeal at the 11th Circuit, but partially won the appeal to the CAFC, getting a reversal on defendants' Walker Process claim.  The patent was, however, found not infringed, invalid and unenforceable.  The court originally awarded fees under the antitrust laws but, on remand after the CAFC decision, re-awarded most of the same fees under § 285.

We previously reported on the case here.

Oral argument is scheduled for Tuesday, November 4, 2008 at 2:00 P.M., Stanford University School of Law.

No Love For Nipple Cover Patent

2008-1590 Randi Black v. Ce Soir Lingerie
ED/TX 2:06-cv-544
Judge John Love

Plaintiff Randi Black appeals from the summary judgment decision and order of Judge John Love finding her 7,152,606 patent invalid as obvious.  The patent essentially claims a pad covering at least 1/2 of a breast and tapered in thickness to a relatively thin outer edge that would not be readily noticeable under clothes.  The accused product is the NuBra®, and defendants also include retailers Dillard's, Federated, Victoria's Secret, Gap, Neiman Marcus and Nordstrom.

Joint Action Of Website And Its Users Can't Infringe

2008-1588 Global Patent Holdings v. Panther BRHC
SD/FL 08-80013
Judge Kenneth Marra

Plaintiff Global appeals from the decision of Judge Kenneth Marra dismissing the case for failure to state a claim.  Global owns 5,253,341, which is directed to a remote query communication system--the asserted claim has some limitations that are performed by the web server, but others that are ultimately performed by the web site user.  Since infringement requires two different actors, the issue is whether the user is acting under the "direction or control" of the web site operator, in this case defendant Panther.

This is the same plaintiff--represented by Niro Scavone--that has sued the Green Bay Packers and others, generally claiming a patent on downloading JPEGs from the internet.  You can see some of the coverage by David Donoghue at Chicago IP who reports that the patent in undergoing a second re-exam.

Timely Notice Not Required For Indemnification

2008-1582 Mass Engineered v. Ergotron
ED/TX 206 cv 272
Judge Leonard Davis

Third-party defendant Global Marketing Partners, Inc. appeals from the order and decision of Judge Leonard Davis holding that it must indemnify defendant CDW from the infringement claims asserted by Mass Engineered.  The appeal is interlocutory, and the underlying case is proceeding with EDTexweblog providing some coverage, including here.

The infringement case involves RE 36,978 and technology for mounting multiple displays to increase a computer's potential display area.  The indemnity issue was analyzed under California law.

This case is also yet another example of the ED/TX lax rules for sealing documents resulting in many, many motions and filings being non-public.

Kimberly Clark IP Sub Not Subject To NY Jurisdiction

2008-1580 Arquest v. Kimberly-Clark Wordwide
SD/NY 07-cv-11202
Judge Colleen McMahon

Arquest appeals from the order of Judge Colleen McMahon finding that Kimberly-Clark Wordwide (KCWW) is not subject to personal jurisdiction in New York, and dismissing Arquests's DJ action.  KCWW is pursuing a later-filed infringement action again Arquest in the Northern District of Texas.  The case involves diapers and training pants--Kimberly-Clark makes Huggies® and Pull-Ups®, while Arquest manufactures  private-label diaper and trainers.