2010-1118 Altair v. LEDdynamics

Plaintiff Altair appeals from the grant of summary judgment by Judge Steeh finding that LEDdynamics LED fluorescent tube replacement bulb did not infringe certain asserted claims of 7,049,761.  While the result appears fairly easy based on the court's claim construction, Altair developed a new infringement theory during summary judgment briefing that the court refused to consider under the doctrine of judicial estoppel.

The relevant claims of the '761 patent required LED's "closely spaced," which the court construed as "not spaced apart, such that adjacent LEDs are sufficiently close together that another LED cannot fit in the space therebetween."  Order, p.1.  This was the construction proposed by LEDdynamics.

The accused device was a 48" light tube containing 36 LEDs, each about 0.25" wide and spaced about 1.25" apart.  Apparently both sides accepted this approach to the LEDs and accused product.  Because one could clearly have placed another 0.25" LED in the 1.25" space, the accused light tube clearly did not infringe.

However, Altair sought to argue that each 0.25" LED was actually composed of 6 LEDs in a tight 2×3 arrangement such that no additional LEDs could fit in between the 6.  Noting that Altair knew (or should have known) about this earlier, the court refused to consider that argument on the basis of judicial estoppel:

Altair’s only argument in response to LEDdynamics’ motion for summary
judgment is that it should be allowed to change the definition of LEDdynamics’ LEDs at this late juncture in the litigation. Altair is estopped from doing so. Transclean Corp. v. Jiffy Lube Int’l, Inc., 474 F.3d 1298, 1307 (Fed. Cir. 2007) (citing New Hampshire v. Maine, 532 U.S. 742, 750 (2001)).

Judicial estoppel prevents a party from taking inconsistent positions in the same or related litigation to protect the integrity of the court. Id. (citing Hossaini v. West Mo. Med. Ctr., 140 F.3d 1140, 1142-43 (8th Cir. 1998)). The Supreme Court has set forth several non-exclusive factors for courts to consider in deciding whether the doctrine of judicial estoppel applies. Id. (citing New Hampshire v. Maine, 532 U.S. at 750-51).  Those factors include:

“(1) the parties later position must be ‘clearly inconsistent’ with its earlier position,

(2) the party must have succeeded in persuading a court to adopt its earlier position, thereby posing a ‘risk of inconsistent court determinations’; and

(3) ‘the party seeking to assert an inconsistent position would derive an unfair advantage or impose an unfair detriment on the opposing party if not estopped.’” Id.

Each of these factors militate in favor of applying the doctrine of estoppel here to preclude Altair from altering its definition of LED in the accused product now from that which it used during the entire Markman proceeding.

Order, p. 5 [formatting changed for ease of reading].

The court found that Altair had original argued that the accused product contained only 36 LEDs (not 216), and the court says that it adopted Altair's definition of LEDs, Order, p. 6, although it doesn't say what is that definition. 

As to the third factor the court found it would be unfair to allow Altair to change arguments now, because it would require new claim construction and waste the court's time and prejudice LEDdynamics.  The court pointed out that it did the original claim construction "based on its understanding of the accused device."  Order, p. 7.

Lastly, the court denied Altair's request to amend its infringement contentions to include different claims from the '761 patent.  After discussing whether the standard is Fed. R. Civ. P. 15 (leave freely given) or 16 (good case)–it is the latter–the court found no good cause to allow the amendment at such a late date.

2010-1118 Order re SJ

2009-1146 Schindler Elevator v. Otis Elevator
SD/NY 06-5377
Judge Colleen McMahon

Plaintiff Schindler appeals from Judge Colleen McMahon's grant of summary judgment of non-infringement to Otis.  Schindler's patent, 5,689,094, relates to a destination dispatching elevator (such as one where the passengers do not press any buttons on-board the elevator) and was asserted against Otis's elevators at 7 World Trade Center.  The claims generally require an information transmitter carried by the passenger and a recognition device, terms the court construed to operate "without requiring any sort of personal action by the passenger" (other than merely walking in proximity to the elevator).  The 7WTC elevator system assigns floor destinations based on (i) tenant's building IDs, an RFID card; (ii) passenger input to a keypad or (iii) building security.  Because each requires action by the passenger–(i) requires the passenger to remove the ID card and place it close to the reader–there is no literal infringement.  The court found that Schindler did not make any doctrine of equivalents argument.

More reading: SJ Opinion

2009-1147 Aspex Eyewear v. Clariti Eyewear
SD/NY 07-2373
Judge Denny Chin

Aspex appeals from Judge Denny Chin's grant of summary judgment on the defense of estoppel related to allegations of infringement of 6,109,747, a patent directed to clip-on eyewear that attaches to frames via magnets.  Applying A.C. Aukerman Co v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc), the court found plaintiff equitably estopped from asserting the '747.  The elements are:

a.
The patentee, through misleading conduct, leads the alleged infringer
to reasonably infer that the patentee does not intend to enforce its
patent against the alleged infringer. "Conduct" may include specific
statements, action, inaction, or silence where there was an obligation
to speak.

b. The alleged infringer relies on that conduct.

In 2003 Aspex counsel sent cease and desist letters alleging infringement of several patents, including the '747.  When Clariti's counsel requested more information including identification of the claims asserted, Aspex counsel responded as to some patents, but not the '747.  Aspex did write in late 2006 to again raise the '747, and then filed suit in 2007.  The court found undisputed that Aspex mislead (through silence), Clariti's reliance and prejudice. 

More reading: SJ Order

2009-1149 Microstrategy v. Crystal Decisions
D/DE 03-1124
Mag. J. Mary Pat Thynge

Microstrategy appeals from the Order of Judge Mary Pat Thynge granting in part defendant's motion for attorney's fees and expenses under § 285. The court previously found that the asserted claims were either not infringed or were invalid, a decision affirmed by the CAFC.  The fees decision is mixed and based on a claim-by-claim analysis, but the court did find that Microstrategy continued to press its case despite overwhelming evidence of invalidity.  The court used March 2005 as the time at which plaintiff should have stopped–this is the date at which rebuttal expert reports were exchanged.

More reading: Order