In a recent decision, the Federal Circuit reversed a jury verdict of willful infringement and a total award of over $100 million based on a modified claim construction.  The court also reversed the finding that one asserted claim was not anticipated, and remanded the case for a redetermination of infringement and whether the remaining claims were valid.

The court considered two competing constructions of the same claim terms, one by the district court in this case, and another by a second district court in an unrelated case involving the same patent.  The Federal Circuit found the second district court's construction to be the proper one, and therefore reversed the construction on appeal (and the related finding of infringement).

More detail of Finistar Corp. v. DirecTV Group, Inc. after the jump.

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In a decision Wednesday, the Federal Circuit affirmed-in-part, vacated-in-part, and reversed-in-part a district court's decision regarding two patents.  The district court held the broadest claims of both patents invalid and not infringed, and dismissed claims of inequitable conduct relating to the patents.

The Federal Circuit affirmed with respect to one patent, but vacated and reversed with respect to the other.  Regarding the first patent, the court held there was no genuine issue of material fact that a product embodying all the claim limitations was in public use before the critical date.  There was also no genuine issue of material fact that the defendants were licensed under the patent, as the license grant was not limited to use with the plaintiff's products.

With regard to the second patent, however, the court held the defendant's motion for summary judgment of invalidity was not properly supported, and vacated the finding of invalidity.  Further, there were insufficient findings in the district court's summary judgment order to support a finding of noninfringement of the second patent.  The court also reinstated the defendant's claims of inequitable conduct, as not all claims of the patents had been found invalid, making an additional finding of unenforceability not moot.

More detail of Zenith Electronics Corp. v. PDI Commc'n Sys., Inc. after the jump.

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In a decision Friday, the Federal Circuit affirmed a district court's grant of summary judgment of invalidity with respect to all asserted claims of two patents.  More particularly, the court held that the claims of the patents were not entitled to the priority date of an earlier-filed application, and were therefore anticipated by intervening prior art.  The original application was filed in 1997, however the court determined that written description support was not found in the application family until a 2000 CIP application.  As a result, a prior product in public use in 1999 (which was the predecessor of the accused product) anticipated the asserted claims.

Of particular interest, however, was the Federal Circuit's treatment of the presumption of validity on appeal.  The district court held that because the issue of priority was never addressed by the USPTO, the patentee had the burden to show it was entitled to the earlier priority date.  The Federal Circuit agreed, stating:

When neither the PTO nor Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective filing date of an earlier filed application.  Since the PTO did not make a determination regarding priority, there is no finding for the district court to defer to.

Of course, the logic of this holding could easily be extended to other issues not addressed by the PTO, such as whether claims of a patent are valid over a reference not considered during prosecution.  As Professor Crouch points out at Patently-O, this issue is the subject of a petition for certiorari currently before the Supreme Court in the Microsoft v. z4 Technologies case.  The response to Microsoft's petition for certiorari is due May 1.

More concerning PowerOasis, Inc. v. T-Mobile USA, Inc. after the jump.

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In a recent decision, the Federal Circuit affirmed a finding of infringement of a patent relating to the detection and classification of Hepatitis C Virus, but remanded the case for a determination of anticipation. 

In arguably the most interesting aspect of the decision, the court vacated the permanent injunction entered against the defendant.  The plaintiff asked for and was awarded damages to compensate for the amount the defendant would have had to pay the plaintiff for a "market entry fee."  As a result, the court reasoned the plaintiff could not assert that it would be irreparably harmed by future sales by the defendant, having already been compensated for the harm caused by the defendant's entry to the market.  The court therefore instructed the district court on remand to determine the amount of royalty due on the defendant's compulsory license under the patent going forward.

The court briefly mentioned the issue of willful infringement after In re Seagate Technology, LLC, but only noted that there was no evidence of objective recklessness by the defendant and therefore the finding of no willful infringement was appropriate.  The court also gave a reminder to parties and lawyers of the potential consequences when being too cavalier toward obligations under the Federal Rules of Civil Procedure.  As explained in the court's footnote 4:

This case aptly demonstrates the pitfalls of playing fast and loose with rules of discovery. Conclusory expert reports, eleventh hour disclosures, and attempts to proffer expert testimony without compliance with Rule 26 violate both the rules and principles of discovery, and the obligations lawyers have to the court. Exclusion and forfeiture are appropriate consequences to avoid repeated occurrences of such manipulation of the litigation process.

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In a decision this week, the Federal Circuit vacated and remanded the district court's determination that the plaintiff's patents-in-suit were invalid as anticipated by another paper that was publicly available via the patentee's FTP site before the critical date for the span of one week, finding genuine issues of material fact as to whether the paper was "publicly accessible" as required by 35 U.S.C. § 102(b) as of the critical date of the patents.  The court, however, affirmed the grant of summary judgment by finding one patent invalid as anticipated by the patentee's own previous paper, as that paper was sufficiently enabled to constitute prior art.

More detail of SRI Int'l, Inc. v. Internet Security Sys., Inc. after the jump.

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In a decision Friday, the Federal Circuit affirmed a district court's finding of infringement and no invalidity of patents relating to the reduction of software piracy.  At issue was a finding of non-infringement based on the claim construction of claim limitations found in patents held by z4 Technologies.   

In affirming the district court decision, the court found that a reasonable juror could find that Microsoft infringed the contested claims notwithstanding the court's modification of the district court's construction of one of the claim limitations.  The court refused a remand to recalculate damages based on the Supreme Court's recent decision in Microsoft v. AT&T, finding that Microsoft had not presented any evidence that some of the infringment was under § 271(f).  As a result, the court affirmed the jury's finding of willful infringement of the asserted claims, and the concomitant damages award of $115 million against Microsoft, plus attorney's fees and $25 million in enhanced damages for willful infringement and litigation misconduct.  

More details of z4 Techs., Inc. v. Microsoft Corp. after the jump,

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In a decision today, the Federal Circuit reversed the rejection of claims in a pending application as anticipated.  The relevant limitation was "flexible polyurethane foam reaction mixture."  The examiner and BPAI interpreted this to encompass any mixture that ultimately produces a flexible polyurethane foam.  The alleged anticipatory reference initial produced a rigid foam, but then was mechanically crushed to result in a flexible foam end product.  Based on this reference, the examiner and BPAI rejected the claims.

The Federal Circuit reversed.  While claims are to be given their "broadest reasonable construction" during examination, the court held that including mechanically crushed rigid foams in the definition of flexible foam was unreasonable.  While the rigid foam mixture may have resulted in a flexible product, it is not a "flexible foam reaction mixture."

More detail of In re Buszard after the jump.

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The Federal Circuit yesterday affirmed a decision by the District Court for the District of Delaware upholding the validity of Reissue Patent 34,712 ("the '712 patent") and the injunction preventing infringement of the '712 patent.  Specifically, the court affirmed the district court's decision that the prior art reference relied upon for the defendants' anticipation argument was not enabling, and thus could not anticipate the claims.  Also, the finding of no obviousness was affirmed, because the district court correctly assessed the Graham factors, and in light of those factual findings, the legal conclusion of obviousness was correct.

The court also affirmed the finding that there had not been an impermissible broadening reissue filed more than two years after the patent was granted.  Finally, the court limited the injunction to only the specific products that were the subject of the Abbreviated New Drug Application (ANDA) that led to the lawsuit, but affirmed the inclusion of both defendants as parties to the injunction, even though one would only be liable for inducing infringement.

More detail of Forest Labs., Inc. v. Ivax Pharms., Inc. after the jump.

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Peter Zura has an interesting post about a case in the Eastern District of Texas (one of the most popular districts for patent cases to be filed) where a patent was held to be both anticipated and, failing that, obvious in light of KSR.  The court also addressed the concept of joint infringement, which the Federal Circuit has yet to address in detail, and found that a showing of agency or concerted action is not required to find joint infringement.  Instead, a contractual relationship may be sufficient.

Interestingly, one defendant in this case solicited prior art from members of the public on its blog to help invalidate the patent.  Apparently the submissions received helped the invalidity case.  [Update (8/30):  The New York Times has a story about the prior art search by the defendant.]  This is an interesting litigation strategy, and one that could be used by defendants in other cases as a way to expand the search for potentially relevant prior art.

Quotes from the court's decision in Advanceme Inc. v. RapidPay, LLC after the jump.

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In a second appeal involving patents relating to the original "Purple Pill^®," a panel of the Federal Circuit split on whether an earlier patent application by a Korean company inherently anticipated one of AstraZeneca's patents covering the popular heartburn medication Prilosec^® (omeprazole).  The panel majority held that a process disclosed in a Korean patent application by Chong Kun Dan Corp. (CKD) would have inherently produced the single disputed limitation, forming in situ a separating layer in the drug, and as a result, anticipated all but one of the claims at issue.  The final claim was held to be obvious as a mere substitution of one known alkaline reacting compound for another.

Judge Newman, in dissent, argued that the science showed that such a separating layer was not formed, and criticized the panel majority for failing to fill in this scientific gap.  She also pointed out the Federal Circuit's inconsistency in its inherency cases, noting that a leading treatise on patent law has recognized this, and taking the panel majority to task for bringing "further uncertainty to this important aspect of patent law."

More details of the case after the jump.

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