SEPTEM BER 1999 Last The Federal Circuit month at M ont h at a Glance RES J UDICATA BARS FEDERAL COURT COUNTER- DISCLOSURE SUPPORTS BROADER CLAIM CLAIM CONSTRUCTION Proper application of res judicata requires proof of: Prosecution history does not limit claim element (1) prior final judgment on merits by court of com- to only one of two disclosed embodiments. petent jurisdiction; (2) identity of parties or those in Princeton Biochemicals, Inc. v. Beckman Instruments, privity with parties; and (3) subsequent action based Inc. , No. 98-1525 (Fed. Cir. Aug. 19, 1999) on the some claims as were raised, or could have (nonprecedential decision) . . . . . . . . . . . . . . . . . .6 been raised, in prior action. United Tech. Corp. v. Chromalloy Gas Turbine Corp. , No. 98-1577 (Fed. CLAIM TERM “PURIFIED” GETS DEFINITION Cir. Aug. 25, 1999) . . . . . . . . . . . . . . . . . . . . . . .1 FROM SPECIFICATION Federal Circuit affirms summary judgment of nonin- NONINFRINGING ALTERNATIVES M UST BE fringement and determination that best mode “AVAILABLE” DURING ACCOUNTING PERIOD requirement was met by a biological deposit made Only by comparing patented invention to its next prior to issuance. E vans Med. Ltd. v. American best available alternative(s) — regardless of whether Cyanamid Co. , No. 98-1446 (Fed. Cir. Aug. 9, 1999) (nonprecedential decision) . . . . . . . . . . . . .7 alternatives were actually produced and sold during the infringement. — can court discern market value SM OKE REDUCTION CLAIM S GO “UP IN of patent owner’s exclusive right, and therefore its SM OKE” expected profit. Grain Processing Corp. v. American Prior art renders obvious claims to reducing side- Maize-Prods., Co. , No. 98-1081 (Fed. Cir. Aug. 4, stream smoke in smoking articles like cigarettes. 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2 In re Case , No. 98-1531 (Fed. Cir. Aug. 31, 1999) (nonprecedential decision) . . . . . . . . . . . . . . . . . .8 “FAUX” PRODUCTS CAN J USTIFY “REAL” PATENTS PATENTEE CANNOT “CONNECT” ON No basis in § 101 to hold that inventions can be Washington, DC ELECTRICAL CONTACT CLAIM LIM ITATIONS ruled unpatentable for lack of utility simply because 202-408-4000 Court affirms attorney fees where patentee altered they may fool some members of the public. J uicy patent figures. Interlink E lec. v. InControl Solutions, Whip, Inc. v. Orange Bang, Inc. , No. 98-1379 (Fed. Inc. , No. 98-1567 (Fed. Cir. Aug. 24, 1999) Cir. Aug. 6, 1999) . . . . . . . . . . . . . . . . . . . . . . . .3 Palo Alto (nonprecedential decision) . . . . . . . . . . . . . . . . . .9 650-849-6600 OBJ ECTIONS TO J URY FORM M UST BE M ADE NO J URISDICTION OVER DISPUTE ARISING BEFORE J URY IS DISCHARGED OUT OF GOVERNM ENT CONTRACT Reasonable jury may find that teachings in one Patentee fails to show that at least some infringing Atlanta reference supersede teachings away in another acts were not performed “ for the government.” 404-653-6400 reference, and jury may combine both references et Propulsion Lab. , Puerta v. California Inst. of Tech. J to invalidate patent for obviousness. Mitsubishi E lec. No. 99-1282 (Fed. Cir. Aug. 5, 1999) (non- Corp. v. Ampex Corp. , No. 97-1502 (Fed. Cir. precedential decision) . . . . . . . . . . . . . . . . . . . . .9 Aug. 30, 1999) . . . . . . . . . . . . . . . . . . . . . . . . . .4 Tokyo 011-813-3431-6943 TRAVEL CUP DESIGN PATENT INVALID “NOVELTY SHIRT” REM AINS “NOVEL” ON Design proven to have been obvious and SUM M ARY J UDGM ENT functional. Berry Sterling Corp. v. Pescor Plastics, Inc. , Disputed factual issues prevent summary judgment Brussels No. 98-1381 (Fed. Cir. Aug. 30, 1999) (nonprece- of invalidity. Oney v. Ratliff , No. 98-1591 (Fed. Cir. 011-322-646-0353 dential decision) . . . . . . . . . . . . . . . . . . . . . . . .10 Aug. 12, 1999) . . . . . . . . . . . . . . . . . . . . . . . . . .5 TOOTHBRUSH ART TOO CROWDED COURT “SEES THROUGH” NONINFRINGEM ENT No error in combining one or more of six prior OF LENS PATENT art references to reject toothbrush claims. In re If a claim reads merely on part of an accused Oggero , No. 99-1116 (Fed. Cir. Aug. 10, 1999 device, that is enough for infringement. (nonprecedential decision) . . . . . . . . . . . . . . . . .11 SunTiger, Inc. v. Scientific Research Funding Corp. , EDITED BY VINCE KOVALICK No. 98-1333 (Fed. Cir. Aug. 19, 1999) . . . . . . . . .6 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 Web site ( 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 Res J udicata Bars Federal Court both damages and injunctive relief. The Texas court denied United’s motion to stay the Texas case Counterclaim in favor of the Delaware case, so both cases pro- ceeded simultaneously. However, the Texas court granted a motion in limine by United to prevent Lawrence F . Galvin Chromalloy from arguing any breach of contract [J udges: Gajarsa (author), Schall, and Cudahy claims in the Texas case. The jury in the Texas case (sitting by designation)] found that United had attempted to engage in monopolistic conduct, but returned a zero damages In United Technologies Corp. v. Chromalloy Gas award. Turbine Corp. , No. 98-1577 (Fed. Cir. Aug. 25, In the Delaware case, Chromalloy filed various 1999), the Federal Circuit reversed a district court’s counterclaims, including a third counterclaim for denial of a motion for partial summary judgment breach of contract. Chromalloy sought declaratory (“ SJ ” ) to bar a defendant’s counterclaim for breach relief and specific performance under the Repair of contract and vacated the district court’s grant of Agreement and mandatory licensing of new tech- specific performance grounded on that same coun- nology. Following judgment in the Texas case, terclaim. The Court based its decision on the dis- United moved for partial SJ in the Delaware case trict court’s failure to apply the doctrine of res judi- under RJ . United’s motion attempted to bar cata (“ RJ ” ) following a state law antitrust action Chromalloy’s third counterclaim to the extent it adjudicated in a different state. sought relief for repairs that had been or could United Technologies Corporation (“ United” ) have been litigated in the Texas case. The page 01 manufactures jet aircraft gas-turbine engines Delaware court denied United’s motion, finding through its Pratt & Whitney (“ Pratt” ) aircraft divi- that the claims and relief sought differed in the two sion. Many of these Pratt engines power commer- cases. Following a bench trial on the issues con- cial airliners. United owns and licenses proprietary tained in the third counterclaim, the Delaware court technology, including patented processes, for found that United had breached the Repair repairing certain components of these engines. Agreement. As a result, the court granted In 1985, United and Chromalloy Gas Turbine Chromalloy’s request for specific performance. Corporation (“ Chromalloy” ) entered into an agree- United appealed both the denial of its RJ motion ment (“ the Repair Agreement” ). Under the Repair and the Delaware court’s final judgment. Agreement, United would license some of its pro- On appeal, the Federal Circuit applied Texas prietary technology to Chromalloy and assist law to the RJ issue, as required by the “ full faith and Chromalloy in meeting Federal Aviation credit” statute. Under Texas’s transactional Administration regulatory requirements for engine approach, RJ prevents the relitigation of a claim or repair. In exchange, Chromalloy owed royalties to cause of action that has been fully adjudicated or United for each repair using the proprietary tech- that should have been litigated in a prior suit. nology. Over time, United and Chromalloy mutual- United argued that RJ applied regardless of any dif- ly had agreed to expand the proprietary technology ferences in the legal theories presented or relief included under the Repair Agreement to encompass requested because the factual basis of a claim con- various newly developed engines and repair trols whether RJ bars that claim. United contended processes. that in both cases Chromalloy had actually litigated In 1992, the federal government began to the same facts and had even sought the same relief, investigate Chromalloy regarding alleged defective but under two different names. engine repair, including repair of Pratt engines cov- The Federal Circuit initially observed that ered by the Repair Agreement. In 1995, a United United had properly appealed the denial of its SJ royalty audit disclosed alleged underpayment of motion because the motion involved a purely legal royalties and unauthorized uses of proprietary tech- question and the factual disputes resolved in the nology by Chromalloy. As a result, United filed suit Delaware case had not affected the resolution of against Chromalloy in the United States District that legal question. The Court then determined Court for the District of Delaware, alleging patent that United had preserved its RJ defense. The infringement and breach of contract. In lieu of an Federal Circuit also rejected Chromalloy’s waiver antitrust counterclaim in Delaware, Chromalloy filed argument because, at an earlier Delaware case an antitrust action in Texas state court, seeking hearing, both parties had declared their intent to 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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