J U N E 1 9 9 9 Last The Federal Circuit month at M ont h at a Glance FEDERAL CIRCUIT LAW APPLIES IN DETERM INING WHETHER PATENT LAW CONFLICTS WITH OTHER FEDERAL STATUTES AND STATE LAW Overruling its precedent to the contrary, the Federal Circuit ruled that it will now apply its own law in determining whether patent law and other federal and state laws conflict. Midwest Indus., Inc. v. Karavan Trailers, Inc. , No. 98-1435 (Fed. Cir. May 5, 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1 NEW CLAIM CONSTRUCTION “BREATHES LIFE” INTO M EDICAL RESUSCITATOR PATENT District court failed to identify motivation to combine references concerning invalidity and erred in reading additional functional limitation from specification into claim. Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc. , No. 98-1106 (Fed. Cir. May 10, 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2 INFRINGEM ENT “FLICKERS OUT” ON FLASHING FOOTWEAR PATENT Summary judgment of noninfringement affirmed, given differences in switch and timing circuits to extinguishing light. Orlaford Ltd. v. BCC Int’l, Ltd. , No. 98-1332 (Fed. Cir. May 20, 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3 VAPOR LIM ITATION “EVAPORATES” INFRINGEM ENT FINDING Court affirms district court’s claim construction, but vacates jury’s infringement Washington, DC 202-408-4000 finding given lack of supporting evidence. CFMT, Inc. v. Steag Microtech, Inc. , No. 98-1487 (Fed. Cir. May 13, 1999)(nonprecedential decision) . . . . . . . . . . .4 Palo Alto ACCUSED CABLE CONNECTOR “CONNECTS” WITH PRIOR ART TO AVOID 650-849-6600 INFRINGEM ENT Hypothetical claim on accused product would have been obvious in view of Atlanta prior art, thereby precluding infringement under doctrine of equivalents. LRC 404-653-6400 E lecs., Inc. v. J ohn Mezzalingua Assocs., Inc. , No. 98-1545 (Fed. Cir. May 27, 1999) (nonprecedential decision) . . . . . . . . . . . . . . . . . . . . . . . . . . . .5 Tokyo 011-813-3431-6943 COURT “SHINES” ON SUNGLASSES PATENT Evidence supports judgment as a matter of law of infringement, validity, and enforceability. Suntiger, Inc. v. Scientific Research Funding Group , No. 98-1418 Brussels (Fed. Cir. May 6, 1999) (nonprecedential decision) . . . . . . . . . . . . . . . . . . . . . .6 011-322-646-0353 DISTRICT COURT’S INTERPRETATION OF “FLOW VALVE” LIM ITATION CANNOT “RESTRICT” INFRINGEM ENT FINDING District court improperly restricted claim limitation to exclude certain prior art configurations. Innova/ Pure Water, Inc. v. Aladdin Sales & Marketing, Inc. , No. 99-1085 (Fed. Cir. May 24, 1999)(nonprecedential decision) . . . . . . . . . . .6 EDITED BY VINCE KOVALICK This publication brings you a synopsis of patent cases decided last month by the United States Court of Appeals for the Federal Circuit based on slip opinions received from the court. You can review and download the full text of each opinion by visiting our website at www.finnegan.com
L A ST M O N T H A T T H E F E D E R A L C I R C U I T Federal Circuit Law Applies in Cir. 1998), cert. denied , 119 S. Ct. 1038 (1999), which had held that regional circuit Determining W hether Patent Law law controlled such issues. Specifically, the Conflicts with Other Federal Federal Circuit stated: Statutes and State Law In order to fulfill our obligation of promoting uniformity in the field of patent law, it is equally important to Louis J . Levy apply our construction of patent law [J udges: Bryson (author), Schall, and Smith] to the questions whether and to what extent patent law preempts or con- In Midwest Industries, Inc. v. Karavan flicts with other causes of action. Trailers, Inc. , No. 98-1435 (Fed. Cir. May 5, Otherwise, we will be forced in the 1999), the Federal Circuit was asked to review awkward posture of holding that, a district court grant of summary judgment with respect to cases coming to us (“ SJ ” ) dismissing Midwest’s federal and state from district courts in some circuits, trademark claims on grounds that they were patent law forecloses certain other barred by federal patent law. The Court causes of action, but with respect to applied Federal Circuit law, overruling en banc , cases coming to us from district its previous decisions holding that regional law courts in other circuits, it does not. page 01 should apply, and reversed the. Midwest Indus. , slip op. at 9. Both Midwest Industries, Inc. (“ Midwest” ) Turning to the merits, the Court rejected and Karavan Trailers, Inc. (“ Karavan” ) manu- the Tenth Circuit’s holding in Vornado that facture and sell trailers for hauling watercraft trade dress protection is unavailable for a behind automobiles. Midwest sued Karavan, product that is “ claimed in a patent and is a claiming that Karavan’s use of curved, winch described, significant inventive aspect of the posts in its trailers infringed its rights under patented invention.” Midwest Indus. , slip op. two design patents, as well as its rights in the at 16. Although statements in a patent may trade dress of a curved winch under Section provide evidence that trade dress in question 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) is functional and thus not entitled to legal pro- and analogous state statutes. Citing the Tenth tection, wrote the Court, the mere fact that a Circuit decision in Vornado Air Circulation patent has been obtained does not “ convert Systems v. Duracraft Corp. , 58 F .3d 1498 what otherwise would have been protected (1995), the district court dismissed Midwest’s trade dress into nonprotected matter.” Id . at trade dress claims on the grounds that the 13. Rather, functionality must be evaluated product configuration in question is a according to the definition set forth by the “ described, significant inventive component” Supreme Court in Qualitex Co. v. J acobson of an issued utility patent, i.e. , U.S. Patent No. Products Co ., 514 U.S. 159 (1995), which stat- 5,518,261 (“ the ‘261 patent” ), which recites a ed that trade dress is functional if it is “ essen- winch post curving “ forwardly and upwardly,” tial to the use or purpose of the article or if it slip op. at 3 (internal citations omitted). affects the cost or quality of the article . . . [or] Before reaching the merits, the Federal if exclusive use of the feature would put com- Circuit broke with precedent to hold that it petitors at a significant non-reputation-related would apply the law of the Federal Circuit in disadvantage.” Midwest Indus. , slip op. at 12. determining whether patent law conflicts with Because the district court had failed to under- other federal statutes or preempts state law take such an inquiry, the Federal Circuit causes of action. The Court ruled en banc on reversed and ordered the lower court to assess this issue to expressly overrule its previous the functionality of the winch post and to decisions such as Cable E determine whether its configuration is other- lectric Products, Inc. v. Genmark, Inc. , 770 F .2d. 1015 (Fed. Cir. wise protectible as trade dress. 1985), and more recently, Hunter Douglas, Inc. v. Harmonic Design, Inc. , 153 F .2d 1318 (Fed. L L P . FI N N EG A N H EN D ERSO N FA RA B O W G A RRET T D U N N ER
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