Federal Circuit Review Provided by Patterson, Belknap, Webb & Tyler LLP
The following is a review of Federal Circuit intellectual property cases decided the week ending September 12, 2003.
Alloc, Inc. et al. v. ITC et al., Nos. 02-1222, 1291 (September 10, 2003).
Opinion by Rader, joined by Michel. Dissenting opinion by Schall.
Alloc owns several patents that claim interlocking floor tiles and methods for assembling them. The ITC construed all the claims of Alloc's patents to require "play" between certain interlocking elements of the tiles. Finding no evidence that the accused importers' tiles provided the required "play," the ITC found no violation of section 337, and hence no domestic injury. Alloc appealed.
The issue on appeal was whether Alloc's claims were properly construed to include the "play" requirement. The Federal Circuit acknowledged that "none of the asserted patent claims recites the term play," but nevertheless affirmed the ITC's finding that all claims required "play." In so-holding, the Federal Circuit explained that "this court looks to whether the specification refers to a limitation only as a part of less than all possible embodiments or whether the specification read as a whole suggests that the very character of the invention requires the limitation be a part of every embodiment."
Judge Schall disagreed, stating that "the
majority has allowed the accused infringer to narrow the scope of the claims to a preferred embodiment disclosed in the specification."
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Dana v. E.S. Originals, Inc., No. 02-1531 (September 8, 2003).
Opinion by Bryson, joined by Rader. Concurring opinion by Dyk.
Dana was the named inventor on a patent related to light-flashing shoes. Dana assigned his patent to L.A. Gear, but retained for himself the right to sue for pre-assignment damages.
L.A. Gear sued E.S. Originals in a California. After the California district court entered summary judgment holding Dana's patent valid, enforceable, and infringed, E.S. Originals and L.A. Gear settled the California case. The settlement included a consent decree indicating that it was the parties' intention that the partial summary judgment orders have no collateral estoppel effect.
Subsequently, Dana sued E.S. Originals in Florida for patent infringement based on pre-assignment sales of the same products found to infringe in the California case. On Dana's motion, the Florida court held that E.S. Originals was collaterally estopped from contesting infringement, validity, or enforceability of the Dana patent. E.S. Originals appealed.
The Federal Circuit, applying Eleventh Circuit collateral estoppel law, held that the Florida court had discretion to apply offensive (i.e., in favor of the plaintiff) collateral estoppel, but had abused its discretion in this case. Noting that "the availability of offensive collateral estoppel creates a 'no-lose' incentive for plaintiffs to hold back and await developments in other plaintiffs' cases," the Federal Circuit remanded the case, instructing the Florida court to "make a finding as to whether Mr. Dana could easily have joined the earlier [California] action."
Concurring in the result, Judge Dyk expressed the view that the Federal Circuit should apply its own law on collateral estoppel and res judicata questions. http://www.fedcir.gov/opinions/02-1531.doc
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CLAIM CONSTRUCTION; INDIRECT INFRINGEMENT
Jansen v. Rexall Sundown, Inc., No. 03-1069 (September 8, 2003).
Opinion by Lourie, joined by Rader and Schall.
Jansen's patent claims methods of "treating or preventing macrocytic-megaloblastic anemia" by administering a combination of folic acid and vitamin B12 "to a human in need thereof." Rexall marketed an over-the-counter supplement that contained folic acid and vitamin B12 within the claimed ranges.
Jansen accused Rexall of indirectly infringing the patent based on alleged direct infringement by Rexall's customers. The district court disagreed, holding that in order for Jansen to prove the required direct infringement by Rexall's customers, Jansen must show that Rexall's customers took the Rexall supplement with the intent of treating or preventing macrocytic-megaloblastic anemia. Finding no evidence of intent to treat or prevent macrocytic-megaloblastic anemia by the Rexall customers, the district court granted summary judgment to Rexall, and Jansen appealed.
Affirming the district court's decision, the Federal Circuit first determined that the "claims are properly interpreted to mean that the combination of folic acid and vitamin B12 must be administered to a human with a recognized need to treat or prevent macrocytic-megaloblastic anemia." Next, concluding that Jansen's evidence was insufficient to prevent summary judgment of non-infringement, the Federal Circuit observed that: "Use of an over-the-counter product like Rexall's is quite different from the use of a product pursuant to a prescription from a medical doctor. In the latter case, a prescription is evidence of a diagnosis and a knowing need to use the product for the stated purpose. Jansen does not have evidence of that in this case." http://www.fedcir.gov/opinions/03-1069.doc
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The following is a review of Federal Circuit intellectual property cases decided the week ending September 19, 2003.
CLAIM CONSTRUCTION; ANTICIPATION; OBVIOUSNESS
Akamai Technologies, Inc. v. Cable & Wireless Internet Services, Inc., No. 03-1007
(September 15, 2003).
Opinion by Gajarsa, joined by Dyk. Partial dissent by Newman.
Akamai's patent claims a system and method for caching Internet content (i.e., storing the content on multiple servers so that it can be more efficiently distributed when many users simultaneously request it). A jury found Akamai's claims infringed, upheld the validity of some claims, and invalidated other claims as anticipated and/or obvious.
On appeal, the Federal Circuit refused Akamai's invitation to construe the term "identifying" as necessitating a "load balancing" function. As a result, the Federal Circuit found several additional claims anticipated. The Federal Circuit also affirmed the jury's obviousness and infringement findings.
Judge Newman, dissenting in part, argued that the Court should not have found the additional claims anticipated because the record contained disputed evidence as to the content of the invalidating prior art. http://www.fedcir.gov/opinions/03-1007.doc