In a recent decision, the Federal Circuit held that a district court erred in its construction of several claim terms in a patent, and as a result, vacated the district court's summary judgment of noninfringement and no invalidity.  The court affirmed the district court's decisions regarding several other issues, including laches, inequitable conduct, and inventorship.

One of the claim terms at issue was in the preamble of the claims.  The court noted that "if [the preamble term] is reasonably susceptible to being construed to be merely duplicative of the limitations in the body of the claim (and was not clearly added to overcome a rejection), we do not construe it to be a separate limitation."

More detail of Symantec Corp. v. Computer Assocs. Int'l, Inc. after the jump.

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Today, the Federal Circuit held that hypothetical instances of direct infringement are not enough to establish that a party induced direct infringement of a patent.  Instead, there must be evidence of instances of actual infringement in order to establish infringement was induced if there are both infringing and non-infringing ways to operate a device.  Because there was no such evidence in this case, the district court's finding of infringement was reversed, and the district court's award of damages and finding that the case was exceptional (doubling the damages and awarding attorney fees), were vacated.

More detail of Acco Brands, Inc. v. ABA Locks Mfr. Co. 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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The Federal Circuit yesterday issued a split opinion dealing with contributory infringement and post-KSR obviousness.  The case involved two patents regarding hematopoietic stem cells collected from blood in the umbilical cord after the birth of a child.  Such cells have shown promise in the treatment of blood-related disorders.  The Federal Circuit held that the patents were obvious because the inventor's research just confirmed the opinions of the scientific community.  This, according to the majority, while valuable to science, is not patentable.  Judge Newman dissented for the second time in less than a week, asserting that the majority did not give sufficient weight to secondary indicia of nonobviousness, such as long-felt need, commercial success, failure of others, and unexpected results, and using hindsight to reconstruct the patented invention.

More detail of Pharmastem Therapeutics, Inc. v. Viacell, Inc. after the jump.

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In E-Pass Technologies ("E-Pass") v. 3Com Corp., Palm Inc., palmOne, Inc. and Handspring, Inc. and Visa International Service Association and Visa U.S.A., Inc. and Palmsource, Inc. ("3Com"), the district court's holding of final summary judgment of non-infringement by 3Com was affirmed by the Federal Circuit.

At issue was a patent ("the '311 patent") entitled "Method and Device for Simplifying the Use of a Plurality of Credit Cards, or the Like." E-Pass filed a complaint for patent infringement against 3Com accusing 3Com of inducing consumers to practice the steps of the patented method on its Palm VII and Palm VIIx personal digital assistant ("PDA") products. Following a claim construction that construed "electronic multi-function card" to be "a device having the width and outer dimensions of a standard credit card with an embedded electronic circuit allowing for the conversion of the card to the form and function of at least two different single-purpose cards," the district court granted 3Com's motion for summary judgment. E-Pass appealed and, on appeal, the Federal Circuit held that the district court had erred by requiring the dimensions of a standard credit card. The Federal Circuit vacated and remanded to the district court to address the issue of infringement under the proper claim construction.

After remand, E-Pass filed two new infringement actions in the district court. One against Visa (Visa U.S.A., Inc. and Visa International Service Association) alleging that Visa had infringed the '311 patent by using a Palm V PDA in two demonstrations. E-Pass filed its second action against PalmSource, Inc., palmOne, Inc., and Handspring making claims of direct, induced, and contributory infringement of the '311 patent based on three new PDA product lines that had been introduced since the first action – Tungsten, Zire, and Treo lines. The district court granted summary judgment of non-infringement as to all defendants resting its findings on two grounds: 1) that even under a broader construction of "card," none of the accused devices could infringe the "electronic multi-function card" limitation; 2) that E-Pass had failed to adduce sufficient evidence to support a finding that any of the defendants or their customers had practiced all the steps of the claimed method; and 3) having demonstrated no instances of direct infringement, E-Pass could not prove liability for induced or contributory infringement.

In affirming the district court's grant of final summary judgment, the Federal Circuit held that the district court properly construed the limitations of the claim from the language of the claims themselves; E-Pass failed to submit any evidence that the patented method had ever been actually practiced on any Palm VII device; and that there was no evidence to show that the Palm defendants taught their customers each step of the claimed method in isolation.

To read the full decision in E-Pass Techs., Inc. v. 3Com Corp., click here.