In a decision yesterday, the Federal Circuit reversed a jury's verdict of infringement under the doctrine of equivalents.  The court had previously vacated-in-part and reversed-in-part the district court's earlier summary judgment of infringement, the result of which was the jury trial conducted by the district court.  The combination of the Federal Circuit's mandate in the earlier appeal and application of prosecution history estoppel precluded the jury's finding of infringement.

On a jurisdicitonal issue, the court also held that the appellee's request to stay enforcement of the injunction pending appeal was sufficient to serve as a notice of appeal under Rule 3, even though no separate notice was filed within the timeframe required by Rule 4. 

More detail of Int'l Rectifier Corp. v. IXYS Corp. after the jump.

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In a precedential order last week, the Federal Circuit denied a petition for a writ of mandamus seeking to direct a district court to vacate its summary judgment order in favor of a patent infringement plaintiff and to enter judgment in favor of the alleged infringer.  The district court's order did not completely resolve the case, but did prevent the alleged infringer from presenting several defenses, including that it was either the actual owner of or had obtained a license under the asserted patents, as well as challenging the plaintiff's standing.

The court held that the fact that the defendant "may suffer hardship, inconvenience, or an unusually complex trial does not provide a basis for a court to grant mandamus," and that mandamus should only be granted when there is "no other means of obtaining the relief desired."  Here, because the issues raised would be reviewable after trial on a traditional appeal, the court rejected the petition for mandamus.

Judge Newman dissented.  In her opinion, it was apparent that the district court had likely made errors in its determination of the parties' summary judgment motions.  As a result, she would have granted the petition in order to review these issues and avoid what may otherwise be an unnecessary trial.

More detail of In re Roche Molecular Sys., 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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The Fourth Circuit last week addressed a district court's ability to issue subpoenas to foreign witnesses in USPTO administrative proceedings. The court held that a district court may issue a Rule 30(b)(6) subpoena to a foreign corporation who is party to an opposition, even if the party has no officers, directors or managing agents who reside within the jurisdiction.  The decision generated a lengthy dissent that argued that this holding greatly extended the reach of the district court in such interference proceedings and was not supported by the applicable statute and USPTO procedures.

More detail of Rosenruist-Gestao E Servicios LDA v. Virgin Enters., Ltd. after the jump.

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In a decision yesterday, the Federal Circuit affirmed a district court's decision denying a motion to set aside a judgment under Rule 60(b)(3) on charges of fraud.  In an earlier litigation, a patent was invalidated under § 102(g) as previously invented by another.  That decision was affirmed on appeal.

More than a year later, new evidence came to light that some statements made during the original litigation may have been false.  The court held that this did not cause a "material subversion of the legal process," which requires "rigorous proof," and includes such activities as bribery of judges or jurors, rather than just fraud between the parties, such as fraudulent documents, false statements, or perjury.  The conduct here was also arguably explainable, and did not rise to the necessary level to warrant setting aside the previous judgment.

More detail of Apotex Corp. v. Merck & Co. after the jump.

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In a decision issued Friday, the Federal Circuit applied the Supreme Court's recent Twombly decision to the pleading requirements for patent and trademark causes of action. The court held that patent infringement plaintiffs need not specifically plead the claims infringed. Further, the court applied a similarly open standard to pleading trademark infringement cases. The pro se nature of the plaintiff combined with the court's statement that it does "not condone [the plaintiff's] method of pleading" would seem to caution members of the bar from adopting this minimalistic approach to drafting complaints, however.

In a lengthy partial dissent, Judge Dyk argued that dismissal of the patent infringement complaint was proper.  In his view, the complaint was not sufficient for pleading infringement under the doctrine of equivalents because the doctrine of equivalents is a complex legal theory requiring more detail for the defendant to be adequately put on notice of the claim.

More details of McZeal v. Sprint Nextel Corp. after the jump.

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In a recent decision, the Federal Circuit affirmed-in part a district court's grant of summary judgment of infringement of a patent, finding that the claims were properly held to include measuring devices that either directly or indirectly compare two signals to determine the proper measurement.  The court reversed-in part the district court's damages award.  The district court properly determined the reasonable royalty rate, but improperly included sales from a company with no corporate relationship to the defendant in the royalty base.  

Additionally, the Federal Circuit reversed the district court's dismissal of the plaintiffs' willful infringement claim, finding the dismissal for failure to prosecute improper, as the district court's grounds for the dismissal was just that the plaintiff did not move for summary judgment on the issue.  Finally, the court affirmed the dismissal of a licensee of the patent as a party, as it did not have standing.

More details of Mitutoyo Corp. v. Cent. Purchasing, L.L.C. after the jump.

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The Federal Circuit issued a ruling Friday addressing the right to a jury trial in a case involving combined equitable (in the form of a correction of inventorship claim under 35 U.S.C. § 256 ) and legal (in the form of various tort claims) issues. The court held that the jury trial on the legal issues must precede the bench trial on inventorship when the legal issues have a common issue of fact with the inventorship claim.

More detail of Shum v. Intel Corp. after the jump.

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The Federal Circuit today addressed whether a prosecuting attorney who was found to have committed inequitable conduct during an infringement suit of the patent prosecuted may intervene to contest the finding.  The court held that when an attorney is merely criticized by the court, not formally reprimanded, they have no standing to appeal.  As a result, the court affirmed the district court's decision denying the prosecuting attorney's motion to intervene in the infringement action.  

More detail of Nisus Corp. v. Perma-Chink Sys., Inc. after the jump.

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In an interesting decision yesterday, the Federal Circuit addressed an unusual procedural issue:  does filing a motion to dismiss toll the time to respond to an amended complaint?  The answer, according to the court, is yes, as long as the time to respond to the original complaint has not yet elapsed.  Otherwise, as the defendant here found out, an answer must be filed within 10 days, rather than 10 days after the motion is decided.

More detail of General Mills, Inc. v. Kraft Foods Global, Inc. after the jump.

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