Patent Law Practice Center

Federal Circuit Affirms Tossed $18 Million Jury Verdict

What Is a Rule 36 Judgment?

Recently, the Federal Circuit issued a ruling in IA Labs CA v. Nintendo Co., LTD, which upheld Nintendo’s victory in the patent litigation brought by IA Labs in the United States Federal District Court for the District of Maryland. See Nintendo Wins Attorneys’ Fees Fighting Baseless Patent Lawsuit. The decision was hardly extraordinary. It simply read: “AFFIRMED. See Fed. Cir. R. 36.” This is what is called a “Rule 36 judgment,” or sometimes a “summary affirmance.”

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. The five conditions are:

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CAFC Reverses Claim Construction, Orders Permanent Injunction

Just over one month ago, the United States Court of Appeals for the Federal Circuit issued a decision in Douglas Dynamics, LLC v. Buyers Products Co.  Douglas sued Buyers for infringement of several patents related to snowplow mounting assemblies. The United States District Court for the Western District of Wisconsin granted summary judgment of non-infringement of U.S. Patent No. Re. 35,700 (’700 Patent) in favor of Buyers. Following a jury verdict that found U.S. Patent No. 5,353,530 (’530 Patent) and U.S. Patent No. 6,944,978 (’978 Patent) valid and infringed, the district court denied Douglas a permanent injunction and assigned an ongoing royalty. While this case was on appeal, the ’530 patent expired, rendering an injunction on the technology covered by that patent moot. The ’978 patent, however, remains in force.

Because the district court applied an erroneous claim construction in granting summary judgment of non-infringement of claim 45 of the ’700 Patent, the Federal Circuit reversed, with Chief Judge Rader writing the opinion and with Judge Newman joining. This Federal Circuit majority also reversed the denial of a permanent injunction against continued infringement of the ’978 Patent, and remanded the case for entry of a permanent injunction consistent with this opinion. Judge Mayer dissented and filed a separate opinion.

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Supreme Court to Hear Medtronic v. Boston Scientific

On May 20, 2013, the United States Supreme Court granted cert. in Medtronic v. Boston Scientific, a case that will answer whether the licensee in a declaratory judgment challenge bears the burden of proving that the alleged non-infringing product does not infringe, or whether the responding patentee must prove infringement. To read the Federal Circuit decision in the case, click here.

The Supreme Court explained the question presented as follows:

In Medlmmune, Inc. v. Genentech, Inc., 549 U.S. 118, 137 (2007), this Court ruled that a patent licensee that believes that its products do not infringe the patent and accordingly are not subject to royalty payments is “not required … to break or terminate its … license agreement before seeking a declaratory judgment in federal court that the underlying patent is … not infringed.”

The question presented is whether, in such a declaratory judgment action brought by a licensee under MedImmune, the licensee has the burden to prove that its products do not infringe the patent, or whether (as is the case in all other patent litigation, including other declaratory judgment actions), the patentee must prove infringement.

Patent Litigation Does Not Create “Domestic Industry”

Several weeks ago, the Federal Circuit issued another decision relating to the “domestic industry” requirement.

Motiva, LLC appealed the decision of the International Trade Commission that Nintendo Co., Ltd. and Nintendo of America, Inc. did not violate § 337 of the Tariff Act of 1930 by importing, selling for importation, or selling certain video game systems and controllers. Ultimately, the Federal Circuit determined that the ITC properly determined that a domestic industry does not exist nor is in the process of being established for U.S. Patent Nos. 7,292,151 (“the ‘151 patent”) and 7,492,268 (“the ‘268 patent”). Thus, the decision of the ITC was affirmed.

The dispute between the parties started n 2008, when Motiva filed suit against Nintendo in the United States District Court for the Eastern District of Texas accusing Nintendo’s Wii video game system (“Wii”) of infringing the ’151 patent. The case was later transferred to the United States District Court for the Western District of Washington. In June 2010, that district court stayed the case pending completion of reexamination of the ’151 patent by the U.S. Patent and Trademark Office.

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