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.

2009-1146 Schindler Elevator v. Otis Elevator
SD/NY 06-5377
Judge Colleen McMahon

Plaintiff Schindler appeals from Judge Colleen McMahon's grant of summary judgment of non-infringement to Otis.  Schindler's patent, 5,689,094, relates to a destination dispatching elevator (such as one where the passengers do not press any buttons on-board the elevator) and was asserted against Otis's elevators at 7 World Trade Center.  The claims generally require an information transmitter carried by the passenger and a recognition device, terms the court construed to operate "without requiring any sort of personal action by the passenger" (other than merely walking in proximity to the elevator).  The 7WTC elevator system assigns floor destinations based on (i) tenant's building IDs, an RFID card; (ii) passenger input to a keypad or (iii) building security.  Because each requires action by the passenger--(i) requires the passenger to remove the ID card and place it close to the reader--there is no literal infringement.  The court found that Schindler did not make any doctrine of equivalents argument.

More reading: SJ Opinion

2009-1147 Aspex Eyewear v. Clariti Eyewear
SD/NY 07-2373
Judge Denny Chin

Aspex appeals from Judge Denny Chin's grant of summary judgment on the defense of estoppel related to allegations of infringement of 6,109,747, a patent directed to clip-on eyewear that attaches to frames via magnets.  Applying A.C. Aukerman Co v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc), the court found plaintiff equitably estopped from asserting the '747.  The elements are:

a. The patentee, through misleading conduct, leads the alleged infringer to reasonably infer that the patentee does not intend to enforce its patent against the alleged infringer. "Conduct" may include specific statements, action, inaction, or silence where there was an obligation to speak.

b. The alleged infringer relies on that conduct.

c. Due to its reliance, the alleged infringer will be materially prejudiced if the patentee is allowed to proceed with its claim.

In 2003 Aspex counsel sent cease and desist letters alleging infringement of several patents, including the '747.  When Clariti's counsel requested more information including identification of the claims asserted, Aspex counsel responded as to some patents, but not the '747.  Aspex did write in late 2006 to again raise the '747, and then filed suit in 2007.  The court found undisputed that Aspex mislead (through silence), Clariti's reliance and prejudice. 

More reading: SJ Order

2009-1149 Microstrategy v. Crystal Decisions
D/DE 03-1124
Mag. J. Mary Pat Thynge

Microstrategy appeals from the Order of Judge Mary Pat Thynge granting in part defendant's motion for attorney's fees and expenses under § 285. The court previously found that the asserted claims were either not infringed or were invalid, a decision affirmed by the CAFC.  The fees decision is mixed and based on a claim-by-claim analysis, but the court did find that Microstrategy continued to press its case despite overwhelming evidence of invalidity.  The court used March 2005 as the time at which plaintiff should have stopped--this is the date at which rebuttal expert reports were exchanged.

More reading: Order