Sughr ue Revi ew Sughr ue Revi ew Volume 1, Issue 7 August 5, 2009 Sughrue Mion, PLLC A Lesson on the Ensnarement Defense, Defending Against Lost Profits, and Willful Infringement DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., Federal Circuit 2008-1240, June 1, 2009 Inside this Tom Andersen issue: This appeal ends a long claims alleged to be in- ings of the other reference 1-2 Depuy Spine, Inc. line of appeals between fringed, but substitutes an because one of ordinary skill v. Medtronic Sofa- DePuy and Medtronic. In a equivalent structure that the in the art, upon reading the mor Danek, Inc. prior appeal, the Federal Cir- patentee (DePuy) asserts is first reference, would be dis- cuit held that Medtronic did within the scope of the pat- couraged from following the 2-3 Titan Tire Corp. v. not literally infringe, but re- ented claims. In this case, path set out in the other ref- Case New Eng- manded for determination of D ePu y asser t ed t h at erence. Accordingly, the land, Inc. infringement under the doc- “conically- shaped” pedicle hypothetical claim was not trine of equivalents. In this screws were equivalent to (or obvious in view of the two 3-4 Agilent Technolo- appeal based on the scope of within the scope of) the gies, Inc. v. Affy- references and Medtronic’s metrix, Inc. eq u i val en cy, Med t r o n i c claimed “spherically- shaped” ensnarement defense was raised the defenses of en- pedicle screws. So for the denied. snarement and a defense hypothetical claim in this 4-5 University of Pittsburgh v. Var- against lost profits. case, the phrase “conically- “Pull- through” products ian Medical Sys- shaped” was substituted for – products the patent owner tems, Inc. The ensnarement de- “spherically- shaped.” Once could have sold with the de- fense can be used when both parties agree that the vice covered by the patent, 5-6 there has been a finding of hypothetical claim covers the Ecolab, Inc. v. FMC but did not sell because the Corporation no literal infringement but accused device, the district infringing device was sold when there is a question of court must assess the prior instead – must be related to 6 Recent Articles infringement under the doc- art introduced by the ac- the patented invention in published trine of equivalents. En- cused infringer (Medtronic) order to be included in the snarement bars a patentee and determine whether the lost profit award. The jury from asserting a scope of patentee (DePuy) has carried awarded DePuy $77.2 million equivalency that would en- its burden of persuading the for profits that DePuy al- compass, or “ensnare,” the court that the hypothetical leged it would have made prior art. Medtronic raised claim is patentable over the from selling “pull- through” an ensnarement defense and prior art. If this hypothetical products Medtronic argued argued that DePuy’s asserted claim would be unpatentable that the purported “pull- scope of equivalency would under 35 U.S.C. §§ 102 or through” products had no “ensnare” the prior art. The 103, then the patentee has functional relationship with Federal Circuit held that en- overreached, and the ac- the patented pedicle screws snarement, like prosecution cused device is noninfringing and could be used inde- history estoppel, is a legal as a matter of law. pendently of the patented limitation on the doctrine of pedicle screws. The Federal equivalents to be decided by In this case, Medtronic Circuit reversed the jury the court, not a jury. argued that the hypothetical award because the products claim was obvious in view of could not be considered to The Federal Circuit ex- two references that Med- be components of a single plained that a helpful first tronic submitted, and that assembly or parts of a com- step in an ensnarement de- DePuy therefore overreached plete machine, nor did they fense analysis is to construct in its doctrine of equivalence together constitute a func- a hypothetical claim that assertion. The Federal Cir- tional unit. The court stated literally covers the accused cuit agreed with the district that there exists no basis for device (Medtronic’s pedicle court’s conclusion that one extending a lost profit award screw). This hypothetical of Medtronic’s references to include damages for un- claim is based largely on the taught away from the teach- patented items that are nei-
Sughrue Review Page 2 Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., Federal Circuit 2008-1240 (cont.) In summary, the ensnarement tion of whether the claims of an is- ther competitive with, nor function defense may be used when there is a sued patent are infringed, either lit- with the patented invention. question of infringement under the erally or by equivalents. Evidence of doctrine of equivalents. When using copying in a case of direct infringe- Willful infringement requires an objective inquiry. Under In re Sea- ment is only relevant to Seagate’s this step, the court will construct a hypothetical claim that literally cov- gate Technology, LLC , to establish second prong because such evidence ers the accused device and then de- may show that the accused infringer willful infringement, a patentee must termine whether this hypothetical knew or should have known about show by clear and convincing evi- claim is patentable over the prior art. the likelihood of its infringement. dence that (i) the infringer acted de- With regard to lost profits, “pull- spite an objectively high likelihood through” products are products the In this case, because the Federal that its actions constituted infringe- patent owner could have sold with Circuit had held in a prior appeal ment of a valid patent, and (ii) that the device covered by the patent, but that Medtronic did not literally in- this objectively- defined risk was ei- did not sell because the infringing fringe the patent and remanded for a ther known or so obvious that it device was sold instead. These determination of infringement under should have been known to the ac- “pull- through” products must be the doctrine of equivalents, the cused infringer. 497 F.3d 1360 (Fed. related to the patented invention in question of infringement was a close Cir. 2007). order to be included in the lost profit one. Thus, an objectively high likeli- award. And lastly, the accused in- hood of infringement would not have The Federal Circuit reaffirmed been found under Seagate’s first fringer’s state of mind is not relevant that Seagate’s first prong is an ob- when determining whether there was prong, and Medtronic was held not jective inquiry and thus, the state of an objectively high likelihood of in- to have willfully infringed. mind of the accused infringer is not Seagate ’s fringement under first relevant. Further, evidence of copy- prong. ing is of no importance on the ques- The Failure of a Plaintiff to Establish a Likelihood of Success on the Merits Defeats a Motion for a Preliminary Injunction Titan Tire Corp. v. Case New England, Inc., Federal Circuit, 2008-1078, June 3, 2009 Marina Zalevsky The failure of a plaintiff to es- which alleged that the sale of back- issue being whether Case raised “a tablish a likelihood of success on hoes with tires infringed the ‘862 substantial question of invalidity.” validity grounds, can defeat a motion patent. Following the filing of the for a preliminary injunction. The infringement suit Goodyear and Ti- On appeal, the Federal Circuit Federal Circuit made this clear in its tan filed a motion for a preliminary clarified the requirements for an in- recent decision in an appeal before injunction to prohibit Case from sell- junction, as reiterated by the Su- J udges Newman, Plager, and Gajarsa. ing any backhoes containing the in- preme Court. Specifically stating In this case, the Federal Circuit af- fringing tires. The district court de- that plaintiffs seeking an injunction firmed the district court’s denial of nied Titan’s motion for preliminary must establish that (1) they are Titan Tire Corporation’s request for injunction, holding that Titan was likely to succeed on the merits; (2) a preliminary injunction against Case not likely to withstand Case’s chal- they are likely to suffer an irrepara- New England, Inc. (“Case”). lenge to the validity of the ‘862 pat- ble harm if the preliminary injunction ent on obviousness grounds despite is not granted; (3) the balance of In Titan, the asserted design the fact that the other three prelimi- equities is in their favor; and (4) an patent, U.S. Design Patent No. 360, nary injunction factors- - irreparable injunction is in the public interest. Winter v. Natural Res. Def. Council, 862 (‘862 patent), is directed to a harm, balance of the hardship and Inc. , 129 S. Ct. 365, 374 (2008). The tractor tire. Goodyear is the owner public interest- - weighed in favor of of the ‘862 patent and Titan Tire granting an injunction. Titan ap- Federal Circuit affirmed the denial of Corporation (“Titan”) is the licensee. pealed from the district court’s de- the preliminary injunction, and in so Goodyear and Titan filed a suit nial of a preliminary injunction, the doing, clarified the evidentiary bur- against Case New England (“Case”), dens in the context of a preliminary
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