We will be tweaking the site for a while, but Wordpress @ Blue Host offers more options, flexibility and features, so we are looking forward to improving the site and rolling out some new features and content.

Thanks.

-Kyle, Josh and Nick

2009-1171, -1558 Outside the Box v. Travel Caddy

The Federal Circuit has granted Outside the Box Innovations’ (aka Union Rich) Motion to Disqualify King & Spalding from representing Travel Caddy on appeal.  Travel Caddy hired lawyers from King & Spalding to represent it on this appeal–however, another King & Spalding lawyer acted as an expert witness for Outside the Box at the trial court (on the issue of the reasonableness of attorneys’ fees).  Outside the Box and Travel Caddy are adverse in the case.

The Federal Circuit described the issue as:

whether, under the Georgia Rules of Professional Conduct (GRPC), a law firm is disqualified from accepting representation of a client on appeal because one of the firm’s attorneys was an expert witness in the same matter on behalf of another party with adverse interests.

Opinion, p. 3.

Cutting to the chase, the answer is yes, the law firm is disqualified.  Interestingly, the reason for disqualification is that the Federal Circuit found that King & Spalding might not adequately represent the interests of its new client Travel Caddy (who opposed the motion to disqualify).

Thus, to properly represent the interests of Travel Caddy, the lawyers from King & Spalding would need to consider whether to challenge the sufficiency of Askew’s expert opinion in this appeal. Members of the firm may not be able to provide adequate representation on that issue without challenging Askew’s opinion. We note that prior counsel for Travel Caddy did specifically challenge the sufficiency of Askew’s expert opinion before the district court. The question whether King & Spalding should challenge the expert opinion of one of King & Spalding’s partners in our view would materially and adversely affect the firm’s representation of Travel Caddy on appeal.

Opinion, p. 4.  Disqualification was done to protect the new client’s interests, not those of the old “client.”

09-1171no Order on Motion

2009-1152 MBO Labs v. Becton

Plaintiff MBO appeals from Judge Joseph Tauro's grant of summary
judgment finding that RE 36,885 invalid for violating the recapture
rule, 35 U.S.C. § 251. 

This decision came after remand by the Federal
Circuit, 474 F.3d 1323 (2007).  Judge Tauro, applying the CAFC's
tripartite test from Pannu v. Storz Instruments, 258 F.3d 1366, 1370-1
(Fed. Cir. 2001), found that the reissue claims recaptured matter
surrendered during the original prosecution to overcome prior art and are therefore invalid.

Peter Zura's 271 Blog has a nice post on the earlier Fed. Cir. decision in this case.

More reading: Order

Counsel:

MBO: K & L Gates (Boston); Fish & Richardson (Boston)
Becton: Wilmer Hale (Boston, DC); Brown Law (Raleigh, NC)

The four cases in Part 1 consist of 3 claim construction cases and one case on damages.

2009-1135 Lydall v. Federal Mogul
07-12473 ED/MI
Judge Avern Cohn

Plaintiff appeal from the claim construction ruling of Judge Avern Cohn, which prompted plaintiff to take a stipulated judgment of non-infringement in order to bring the matter to appeal.  The patent, 6,092,622 (RE39,260), relates to thermal and acoustical shielding via a flexible and fibrous batt.  There is nothing esoteric or unusual about the claim construction issues, and the court gives a detailed analysis including the intrinsic evidence and prior art.

More reading:  Claim Construction Order

2009-1141 Interactive Health v. King Kong USA
CD/CA 06-1902
Judge Valerie Baker Fairbank

Defendants appeal the judgment and denied JMOL entered by Judge Valerie Fairbank on the jury verdict of infringement and damages of approximately $1.7 million.  The sufficiency of plaintiff's damages expert seems to be the key issue (although the JMOL also covers invalidity too), with focus on the "entire market rule," which can be implicated when the accused device includes both patented and non-patented features.  The inquiry is whether damages can be predicated on the value of the entire product or only on the patented portion.

More reading: JMOL Order 

2009-1142 to 44 Intellectual Science v. Sony
ED/MI 06-10406
Judge Avern Cohn

Plaintiff Intellectual Science appeals Judge Avern Cohn's grant of summary judgment of non-infringement to defendants Sony et al., related to CD players/recorders.  The representative patents are 5,748,575 and 6,222,799.  The issues boil down to two items of claim construction, one of which relates to whether the preamble should or should not be given any limiting effect.  According to the court, the case boils down to a patent related to computer CD drives while the accused products are all audio CD devices. 

Judge Cohn does a mea culpa and laments his decision to do combined claim construction and summary judgment rather than dividing it into two stages.

More reading: SJ Order

2009-1145 M Ship v. Ice Marine
SD/FL 06-21866
Judge Alan Gold

Plaintiff M Ship appeals Judge Alan Gold's grant of summary judgment of non-infringement. The case involves an M-shaped hull design for a watercraft, and the claims include language that the outer surface of the sponson (or outer skirt structure) must be "substantially perpendicular with respect to the static water line."  The court interpreted this to mean the angle at the point that the skirt entered the water–because the accused Bladerunner boats have an angle of 60-65 degrees at the point of entry to the water line, there could be no literal infringement.  Equivalents was limited by Festo-type prosecution history estoppel.

More reading: Order  (Too large to upload.  Email me if you want a copy).

2009-1091     Smith & Nephew v. Arthrex      12/2/2008
2009-1092     Fraser v. High Liner Foods     12/2/2008
2009-1094     Asymmetrx v. Biocare Medical     12/3/2008
2009-1095     Joyal Products v. Johnson Electric     12/3/2008
2009-1096     Amgen v. F Hoffmann-La Roche     12/4/2008
2009-1097     Cartner v. Alamo Group     12/4/2008
2009-1098     Verizon Services v. Cox Fibernet     12/4/2008
2009-1099     SEB v. Montgomery Ward     12/4/2008
2009-1101     Advanced Magnetic v. Rome Fastener     12/4/2008
2009-1102     Advanced Magnetic v. Rome Fastener     12/4/2008
2009-1105     Perfect Web v. Infousa     12/10/2008
2009-1107     Alloc v. Pergo     12/11/2008
2009-1108     SEB v. Montgomery Ward     12/11/2008
2009-1109     Collegenet v. Xap Corporation     12/12/2008
2009-1110     IGT v. Alliance Gaming     12/12/2008
2009-1111     Becton Dickinson v. Tyco Healthcare     12/12/2008
2009-1116     Broadcom v. Qualcomm     12/23/2008
2009-1117     Broadcom v. Qualcomm     12/23/2008
2009-1118     Advanced Magnetic v. Rome Fastener     12/23/2008
2009-1119     SEB v. Montgomery Ward     12/24/2008
2009-1121     Catch Curve v. Venali     12/24/2008
2009-1122     Alloc v. Pergo     12/24/2008
2009-1128     Matlink v. Home Depot     12/30/2008
2009-1130     Orion IP v. Hyundai Motor     12/31/2008
2009-1131     Digital Spectrum v. Eastman Kodak     12/31/2008
2009-1132     Geo M Martin v. Alliance Machine     12/31/2008

2009-1047    Garber v. Chicago Mercantile Exch         11/4/2008
2009-1048    Hildebrand v. Steck Manufacturing         11/5/2008
2009-1049    Bengis v. Moss         11/4/2008
2009-1050    Therasense v. Becton         11/4/2008
2009-1051    Aspex Eyewear v. Elite Optik          11/3/2008
2009-1052    St. Clair Property v. Canon Inc         11/4/2008
2009-1053    Becton Dickinson v. Tyco Healthcare         11/4/2008
2009-1054    Conforti v. The Ocean Group         11/5/2008
2009-1057    Singhal v. Mentor Graphics         11/5/2008
2009-1058    Medtronic Navigation v. Brainlab         11/6/2008
2009-1059    Medtronic Navigation v. Brainlab         11/6/2008
2009-1061    Prism Tech v. Verisign         11/7/2008
2009-1063    Boston Scientific v. Johnson         11/10/2008
2009-1065    Highmark v. Allcare Health         11/13/2008
2009-1068    Bid For Position v. AOL         11/14/2008
2009-1069    Peer Communications v. Skype Tech         11/14/2008
2009-1070    Janssen Pharma v. Teva Pharma         11/17/2008
2009-1071    Eli Lilly v. Teva Pharma         11/17/2008
2009-1072    Bally Gaming v. IGT         11/18/2008
2009-1073    Fraser v. High Liner Foods         11/18/2008
2009-1074    Fraser v. High Liner Foods         11/18/2008
2009-1076    Callaway Golf v. Acushnet Company         11/19/2008
2009-1078    Monsanto Company v. Dav.id         11/25/2008
2009-1085    Innovative Therapies v. Kinetic         11/26/2008
2009-1086    Verizon Services v. Cox Fibernet         11/26/2008
2009-1087    Encyclopaedia v. Alpine Electronics         11/26/2008
2009-1088    Janssen Pharma v. Barr Laboratories         11/26/2008
2009-1090    Liquid Dynamics v. Vaughan Company         11/26/2008

2009-1039 Bowling v. Hasbro
D/RI 05-cv-229
Judge William Smith

Hasbro appeals from the judgment of Judge William Smith confirming damages (almost $500k) from a jury trial on infringement, enforceability and no inequitable conduct, and marking.  There did not appear to be a JMOL on infringement.  The case involves 5,938,197 related to certain types of polyhedral dice (attention AD&D players!), including a six-sided die used in some of Hasbro's Monopoly editions.  The marking issue focused on whether marking the die packaging was sufficient, while damages was based on a reasonable royalty theory supported by the parties' testimony but no expert for Bowling.

Memorandum and Order (sorry, WAY too big to post.  20 pages shouldn't be 14mb.  Memo to Rhode Island: don't scan, use "Print to PDF.")  Email me and I can send it too you if you want.

2009-1041 Technical Furniture Group v. CBT Supply
D/MD 06-3424
Judge Marvin Garbis

Plaintiff appeals from the judgment following a bench trial before Judge Garbis that its declaratory claims to alter the inventorship of 7,047,890 and D541,084 were not proved by clear and convincing evidence.  Plaintiff Stengel is a named co-inventor with others on these patents, and the suit attempted to drop these "others" and to add other others who are aligned with plaintiff.  Some additional counts related to the validity of an assignment of those patents' rights, but those claims were severed into a new action.

Decision (also scanned and too large.  Attention Maryland: see my note above to Rhode Island.)  Email me and I can send it too you if you want.

2009-1044 The Forrest Group v. Bon Tool
SD/TX 05-4127
Judge Nancy Atlas

Bon Tool appeals from the decision of Judge Nancy Atlas finding that plaintiff Forrest had improperly marked certain of its platform stilt products but awarding only $500 (with 1/2 going to the U.S.) finding it a result of a "single decision" to mark (as opposed to $500 for each stilt wrongly marked).  The court did also find the patent not invalid but not infringed.

35 USC 292 deals with false marking, and provides that violators "Shall be fined not more than $500 for every such offense."  Judge Atlas found a single decision to falsely mark is a single offense, even if the mark appears falsely on hundreds or more products.  The court reviewed either old pre-Federal Circuit law or district court decisions to conclude that the penalty does not apply to each good sold.  While perhaps not a large case, an interesting topic.

Order

2009-1045 Wedgetail Ltd v. Huddleston Deluxe
ED/TX 07-cv-202
Judge David Folsom

Defendant Huddleston appeals from Judge Folsom's decision to dismiss with prejudice its counterclaims based on a lack of subject matter jurisdiction.  After claim construction, which was adverse to plaintiff, plaintiff moved to dismiss its infringement claims with prejudice, and also gave a covenant that it would not sue defendant Huddleston on any current product.  The court agreed that the dismissal and covenant divested it of jurisdiction, and dismissed the counterclaims.

Motion (granted)

2009-1046 Abbott v. Yeda Research
D/DC 00-1720
Judge Ricardo Urbina

Not an infringement case but an appeal from a district court review of a BPAI decision that found Abbott's 5,334,915 unpatentable over certain prior art.  Judge Urbina reversed the BPAI.  The issue relates to inherency of disclosure, a topic of current interest to many so I include it here.

Decision

I have worked on quite a few amicus briefs, both in private practice and during law school while working at the Washington Legal Foundation.  They are (usually) fun to write and are (usually) great to have on your side because they can make arguments or points that you can't or won't (or don't have room to include).

However, I never gave much thought to finding an amicus to join my side in an appeal until my opponents in a pending Federal Circuit case started trolling around looking for one (or two, or three….) to help them.  More on that in a later post, but that process got me thinking about who is filing these briefs and how to go about getting them to help you.

According to Wikipedia, amicus curiae (pl. amici curiae), or friend of the court, is a practice from ancient Roman law where non-parties to a case could voluntarily offer the court additional information, insight, or explanation on the case, or on the policy or wider implications of a particular ruling. 

Rule 29 of the Federal Rules of Appellate Procedure generally allow participation of an amicus by leave of court, and the Federal Circuit regularly allows them.  Indeed, a review of the decisions in Seagate, Bilski, and Egyptian Goddess shows quite a few in each.

I went through the last couple years of CAFC patent decisions and looked at the amicus participants, whom I could break down into some groups.

One group of amicus filers are trade organizations and groups, such as the Generic Pharmaceutical Association, National Association of Chain Drug Stores, and Pharmaceutical Research & Manufacturing Alliance, just to name a few.  Most are obviously industry specific, but they are a good place to start, especially if your opponent is not in the same industry;

Some companies also like to file amicus briefs, so we have seen Apple, Sprint, Electrolux, Nike, etc.  Think about companies that might want to same result as you–or fall into "the enemy of my enemy is my amicus" category;

The PTO, ITC and some government groups, as well as individuals filing pro se.

One final group, which probably includes the entities who participate the most, are bar organizations and IP groups.  If you are looking for an amicus help, don't forget to check out local or state bar associations or property law associations.  Many probably don't regularly do amicus briefs, so it might take some calling around, convincing…and maybe a donation.

For CAFC cases I identified a few repeat filers, which I have listed below.  For each I looked to see if they posted online some information or procedures for requesting amicus help.

American Intellectual Property Law Association (AIPLA): information and procedures for requesting amicus participation by AIPLA can be found here.

Federation Internationale des Conseils en Propriete Industrielle (FICPI): I couldn't find anything online, but the contact information can be found here.

United Inventors Association: I couldn't find anything online, but the contact information can be found here.

Washington Legal Foundation: I couldn't find anything online, but the general website address is  here.

Federal Circuit Bar Association: information and procedures for requesting amicus participation by FCBA can be found online here.

Intellectual Property Owners Association: information about the IPO's amicus committee, including a list of member, can be found  here.

Electronic Frontier Foundation: Contact information for EFF can be found at the Staff page of the Contact us page here.

I expect a series of these Catching Up posts over the next few weeks until we get through December's filings, and then we will resume our regular coverage.  Josh has also promised some On The Radar posts soon, so the pressure is on.

2009-1032 Boehringer Ingelheim v. Barr Labs
D/DE 05-cv-700
Judge Joseph Farran

Plaintiff Boehringer appeals from the judgment of Judge Farran that the claims of 4,886,812 directed to pramipexole dihydrochloride, the active ingredient in Mirapex®, are invalid for nonstatutory double patenting.  The case was based on an ANDA filed by defendants and the matter tried to the court.

More reading:

2009-1033 Cordis v. Medtronic
D/DE 97-cv-550
Judge Sue Robinson

Defendants appeal from the opinion of Judge Sue Robinson confirming infringement, validity and damages regarding 4,739,762 concerning coronary stents.  The case was filed in 1997 and resulting in 4 liability trials, 2 damages trials and at least one appeal, 511 F.3d 1157 (Fed. Cir. 2008).  On remand, the court considered the effect of the Federal Circuit's changes to certain claim construction.  The court concluded that:

• a new trial on obviousness of claim 23 is not needed and the claim is valid;

• defendant Boston Scientific has waived any defense of obviousness with respect to claim 44; and

• no new trial on damages is needed.

More reading:

Opinion

With 2008 in the books, Josh and I have reviewed PATracer and feel a few changes are needed to better meet our goals.

First, a couple observations by us:

• When we get busy at work (like we did in December with a big preliminary injunction hearing and the holidays) the frequency of our posts suffer, and it is easy to fall behind.

• Many cases are, for lack of a better description, not that interesting from a legal, procedural or factual standpoint.

• Many cases are also difficult to decipher from the ECF materials–sometimes all the good stuff in under seal, sometimes the court's opinions or explanations of rulings are downright Hobbesian: "solitary, poor, nasty, brutish, and short."

• We didn't cover brief filings or oral arguments as often as we want.

In an effort to address these points we have decided on the following:

1.  Nicholas Gingo, a newly minted attorney here at Renner Otto, has volunteered agreed to join us, and will be posting soon. 

2.  The "basic" post for most newly filed appeals will probably get a little shorter–although we will still provide links to documents and some information on each.  This should make it easier to stay current and free up time so that the more interesting cases can get more detailed write-ups.

3.  New logo.  Many refer to us as PAT-racer, so we went with a racing motif.