St. Jude: Double Patenting at the Federal Circuit
In the recent Federal Circuit case of St. Jude Medical v. Access Closure, the defendant Access Closure, Inc. (ACI) appealed several rulings made by the United States District Court for the Western District of Arkansas in favor of St. Jude Medical, the patentee-plaintiff. The rulings relate to three patents that St. Jude asserted against ACI, namely U.S. Patent No. 7,008,439 to Janzen et al., U.S. Patent No. 5,275,616 to Fowler, and U.S. Patent No. 5,716,375, also to Fowler.
St. Jude filed its complaint in the United States District Court for the Western District of Arkansas on October 22, 2008, alleging that ACI infringed various claims of the aforementioned patents. During the litigation, the district court issued a Markman order in which it construed various claim terms found in the Janzen patent, including “means for ejecting” and “ejecting mechanism.” Unable to resolve the dispute, the parties proceeded to trial before a jury.
The jury rendered a verdict that ACI had infringed claims 7 and 8 of the Janzen patent, but that claims 7, 8, and 9 of the Janzen patent were invalid for double patenting in light of the sibling ’498 patent. Implicit in the jury’s double patenting finding was the jury’s conclusion that claims 7, 8, and 9 of the Janzen patent were not patentably distinct from claim 7 of the sibling patent.
CAFC Making it Easier to Get an Injunction?
Several weeks ago, the Federal Circuit issued an interesting decision in Aria Diagnostics v. Sequenom, which seems to continue a recent trend showing that at least certain panels of the Federal Circuit would like to see a different interpretation by district courts relative to the injunction standards.
Aria (known as Ariosa Diagnostics, Inc. at the time of appeal) sought a declaration that its Harmony test did not infringe any claim of U.S. Patent No. 6,258,540 (the ’540 patent), owned by defendant Isis Innovation Limited (Isis) and licensed by Isis exclusively to Sequenom, Inc. Sequenom counter-claimed, alleging that Ariosa’s Harmony test infringes the ’540 patent. The United States District Court for the Northern District of California denied Sequenom’s motion for a preliminary injunction to prevent Ariosa from making, using, or selling that test. However, the Federal Circuit (per Chief Judge Rader, with Judges Dyke and Reyna) determined that the district court incorrectly interpreted the asserted claims and improperly balanced factors regarding issuance of a preliminary injunction.
Most interesting was the discussion about how the district court failed to properly consider the familiar four-factor injunction test. The district found that price and market erosion would occur. Under Federal Circuit precedent, price erosion, loss of goodwill, damage to reputation, and loss of business opportunities are all valid grounds for finding irreparable harm. Yet, the district court denied the injunction for four specific reasons.
08.26.13 | CAFC, Patent Issues | Gene Quinn
CAFC Upholds ITC Exclusion Order in Rule 36 Judgment
“Man Controlling Trade” outside the ITC in DC, by NY sculptor Michael Lantz (1942).
The United States Court of Appeals recently issued a Rule 36 Summary Affirmance of the April 27, 2012 Final Determination of the International Trade Commission (hereinafter “Commission” or “ITC”) in In the Matter of Certain Ground Fault Circuit Interrupters and Products Containing Same. A Rule 36 judgment can be entered without an opinion when it is determined by the panel that any one of five conditions exist and a written opinion would not have precedential value. See What is a Rule 36 Judgment? The Federal Circuit judgment affirmed the Commission’s general exclusion order, “prohibiting the unlicensed importation of infringing ground fault circuit interrupters and products containing same,” inhibiting infringement on Leviton Manufacturing’s U.S. Patent No. 7,737,809.
The Commission instituted this particular investigation on October 8, 2010, based on a complaint and an amended complaint filed by Leviton Manufacturing Co., of Melville, New York (“Leviton”). The complaint and amended complaint alleged violations of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337), in the importation into the United States, the sale for importation, and the sale within the United States after importation of certain ground fault circuit interrupters and products containing the same by reason of infringement of claims 1-7, 9-11, 13-17, 23-26, and 32-36 of U.S. Patent No. 7,463,124 (“the ’124 patent”); claims 1-11, 13-28, 30-59, 61-64, and 74-83 of U.S. Patent No. 7,737,809 (“the ’809 patent”); and claims 1-4 and 8 of U.S. Patent No. 7,764,151 (“the ’151 patent”).
08.19.13 | CAFC, ITC, Patent Issues | Gene Quinn
CAFC Reverses Summary Judgment on Doctrine of Equivalents
In The Charles Machine Works, Inc. v. Vermeer Manufacturing Co. (Fed. Cir., July 26, 2013), the patent in question was U.S. Patent 5,490,569 (the “’569 patent”), which generally relates to a two-pipe drill for boring underground holes in the horizontal direction. An inner pipe rotates the drill bit. An outer pipe, which includes a body and casing, is used for steering. The ’569 patent also discusses a structure called a “deflection shoe” as a steering mechanism. The deflection shoe is included on one side of the casing to create an asymmetry about the casing’s centerline axis. If the casing does not rotate, the deflection shoe causes the drill to deflect away from a straight path. When the casing rotates, however, the drill follows a straight horizontal path.
The Charles Machine Works (“CMW”) sued Vermeer for infringement of the ’569 patent. Asserted apparatus claims 1, 4–8, 10, 12, 18, 20–25, and 27 recite “a deflection shoe mounted on a first side of” either “the body” or “the casing.” Asserted method claims 30–31 recite “the casing having a deflection shoe thereon.”
CMW alleged infringement by two types of Vermeer drills: non-commercial prototypes and commercial products. Both types of drills include a structure called a bent sub, which CMW contends meets the “deflection shoe” and “mounted on” limitations. The prototypes include an additional structure called a wear pad. Vermeer moved for summary judgment of noninfringement, literal or under the doctrine of equivalents, of the asserted claims. The district court granted Vermeer’s motion as to all accused products. CMW appealed to the United States Court of Appeals for the Federal Circuit.
On appeal, CMW argued, among other things, that the court erred by granting summary judgment as to Vermeer’s accused prototypes. Furthermore, CMW argued that Vermeer’s motion for summary judgment covered only the accused commercial products. As a result, CMW asserted that it did not have notice that the district court was considering making a ruling relative to the prototypes, which CMW maintained are structurally different than the commercial products.
08.15.13 | Federal Circuit Cases, Patent Issues, Patent Litigation, posts | Gene Quinn
CAFC OKs JMOL When Expert Changes Testimony at Trial
Recently, the Federal Circuit issued a decision in Rembrandt Vision Technologies v. Johnson & Johnson Vision Care. The issue in the case primarily centered around whether the district court correctly granted judgment as a matter of law that J&J did not infringe claims of U.S. Patent No. 5, 712,327.
The technology at issue in the case related to contact lenses. Two important characteristics of a contact lens are its permeability to oxygen and the wettability of its surface. By the 1980s, both hard and soft contact lenses that were permeable to oxygen were well known, but these contact lens often lacked a highly wettable surface.
The contact lens claimed in the ‘327 patent had both a highly wettable surface and were permeable to oxygen. The patent disclosed a soft gas-permeable lens that contained an acrylic layer on the surface of the lens body. This acrylic layer increased the wettability and comfort of the lens.
08.14.13 | CAFC, Patent Issues, posts | Gene Quinn
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09.23.13 | CAFC, Patent Issues, posts | Gene Quinn