NOVEMBER/DECEMBER 2004 Last The Federal Circuit month at Month at a Glance PLAINTIFF REBUTS FESTO PRESUMPTION COURT REVERSES JURY VERDICT BASED ON AGAINST DOE BIASED JUROR Prosecution history establishes that the rationale Spouse of employee of a party at time of trial is underlying amendments narrowing the scope of impliedly biased, given financial interests in out- claims bears no more than a tangential relation to come of case. Caterpillar, Inc. v. Sturman Indus., the equivalent in question. Insituform Techs., Inc. Inc. , No. 03-1444 (Fed. Cir. Oct. 28, 2004) . . .4 v. Cat Contracting, Inc. , No. 99-1584 (Fed. Cir. Oct. 4, 2004) . . . . . . . . . . . . . . . . . . . . . . . . .1 ITC FAILED TO CONSIDER INVALIDITY DEFENSES DURING ENFORCEMENT PROCEEDINGS FOR GENERAL EXCLUSION DICTIONARY DEFINITION DOES NOT TRUMP ORDER INTRINSIC RECORD FOR CLAIM 19 U.S.C. § 1337(c) specifically requires that all CONSTRUCTION legal and equitable defenses may be presented Despite contentions to the contrary, cases such as in all cases, which includes enforcement Texas Digital Systems, Inc. v. Telegenix, Inc. , 308 proceedings. Vastfame Camera, Ltd. v. F.3d 1193 (Fed. Cir. 2002), do not require, or Int’l Trade Comm’n , No. 03-1426 (Fed. Cir. even allow, the Court to disregard the intrinsic Oct. 7, 2004) . . . . . . . . . . . . . . . . . . . . . . . . .4 record. C.R. Bard, Inc. v. U.S. Surgical Corp. , No. 04-1135 (Fed. Cir. Oct. 29, 2004) . . . . . .1 COURT ORDERS NEW DETERMINATIONS ON Washington, DC INFRINGEMENT OF DISPOSABLE CAMERAS DJ SUIT SHOULD NOT HAVE BEEN DISMISSED 202.408.4000 Portion of the ITC’s modified orders concerning Threats of patent infringement were not aimed at Fuji’s patents for disposable cameras is remanded negotiation but at impeding a competitor’s on infringement issues. Fuji Photo Film Co. v. Atlanta, GA commercial activity. Capo, Inc. v. Dioptics 404.653.6400 Int’l Trade Comm’n , No. 03-1016 (Fed. Cir. Med. Prods., Inc. , No. 04-1045 (Fed. Cir. Oct. 7, 2004) . . . . . . . . . . . . . . . . . . . . . . . . .5 Oct. 25, 2004) . . . . . . . . . . . . . . . . . . . . . . . .2 Cambridge, MA NO STRUCTURAL EQUIVALENCE 617.452.1600 DISCLOSURE IN PATENTS PREVENTS Court finds substantial differences between MISAPPROPRIATION OF TRADE-SECRET CLAIM accused structure for positioning well casings and Although party later utilized technology disclosed Palo Alto, CA that disclosed in patent specification. Frank’s under confidential agreement, it did not do so 650.849.6600 Casing Crew & Rental Tools, Inc. v. Weatherford until after that technology was disclosed in issued Int’l, Inc. , No. 03-1519 (Fed. Cir. Nov. 30, patents. On-Line Techs., Inc. v. Bodenseewerk 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6 Reston, VA Perkin-Elmer GmbH , No. 04-1291 (Fed. Cir. 571.203.2700 Oct. 13, 2004) . . . . . . . . . . . . . . . . . . . . . . . .2 GOVERNMENT CONTRACTOR FORFEITS PATENT FOR FAILURE TO DISCLOSE Brussels PUBLIC DISPLAY MAY NOT BE PUBLIC USE OF INVENTION TO ARMY + 32 2 646 0353 FURNITURE DESIGNS Government contract requiring contractor to The district court failed to analyze the “public identify inventions on DD Form 882 must be nature” of premarket activities and exhibition by strictly enforced to permit government to properly Taipei furniture company as invalidating public use. + 886 2 2712 7001 identify inventions. Campbell Plastics Eng’g & Bernhardt L.L.C. v. Collezione Europa USA, Inc. , Mfg., Inc. v. Brownlee , No. 03-1512 (Fed. Cir. No. 04-1024 (Fed. Cir. Oct. 20, 2004) . . . . . .3 Nov. 10, 2004) . . . . . . . . . . . . . . . . . . . . . . .6 Tokyo + 03 3431 6943 EDITED BY VINCE KOVALICK This publication brings you a synopsis of patent cases decided over the last months by the United States Court of Appeals for the Federal Circuit based on slip opinions received from the court. Given the small number of precedential cases in Nov. 2004, we combined them with the Oct. 2004 cases. You can review and download the full text of each opinion by visiting our website at www.finnegan.com
L A S T M O N T H A T T H E F E D E R A L C I R C U I T Plaintiff Rebuts Festo Presumption the Court amended its damages ruling. Cat argued that the district court had erroneously ruled on Against DOE damages based on deposition and affidavit testimo- ny without the opportunity to observe and assess [Judges: Schall (author), Mayer, and Michel] the credibility of the new witnesses. The Federal Circuit agreed that the procedure chosen by the In Insituform Technologies, Inc. v. Cat district court was tantamount to a trial by affidavit. Contracting, Inc. , No. 99-1584 (Fed. Cir. Oct. 4, The deposition testimony of the two additional wit- 2004), the Federal Circuit affirmed a judgment of nesses combined with inconsistent testimony from infringement with respect to the Defendants, vacat- witnesses at two different trials created a disputed ed a finding of willful infringement and remanded issue of material fact upon which the quantum of for further proceedings on that issue with respect to damages turned. Accordingly, the Federal Circuit certain Defendants, and vacated the district court’s vacated and remanded the damages issue. damages award and remanded for further proceed- Concerning willfulness, Cat had failed to obtain ings on that issue. an opinion of counsel, and the district court found This case has a lengthy procedural history con- willful infringement. The Federal Circuit vacated cerning a complex series of trials and appeals span- this decision, concluding that its elimination of the ning nearly fourteen years. Insituform adverse inference arising from failure to obtain an Technologies, Inc. and other related parties (collec- opinion of counsel is a material change requiring a tively “Insituform”) sued Cat Contracting, Inc. and fresh weighing of the evidence in this case. others (collectively “Cat”) for infringement of U.S. The district court had also found that Cat and Patent No. 4,366,012 (“the ‘012 patent”), which is page 01 another Defendant were liable for induced infringe- directed to a process for rehabilitating underground ment because they had taught their licensees to use pipe without digging it up. Specifically, the claim an infringing process. Concerning intent, Cat’s and at issue of the ‘012 patent claims a process for the other Defendant’s licensing activities had impregnating a flexible tube liner with resin prior to occurred after the first trial with full knowledge that insertion of the liner into a damaged pipe. the process had been accused of infringing. Thus, The infringement question was one of equiva- the Federal Circuit concluded that the evidence of lency and required a determination of whether the record supported the finding of induced infringe- Plaintiffs were barred by prosecution history estop- ment. pel from asserting the DOE. The Federal Circuit ruled that the rationale underlying amendments made during the prosecution history bore no more Dictionary Definition Does Not than a tangential relation to the equivalent in ques- Trump Intrinsic Record for Claim tion and, therefore, rebutted the Festo presumption that a narrowing amendment made for a reason of Construction patentability surrenders the entire territory between the original claim limitation and the amended limi- [Judges: Michel (author), Newman, and Prost] tation. Specifically, the Court ruled that an amend- ment limiting the literal scope of claim 1 to a “sin- In C.R. Bard, Inc. v. United States Surgical Corp. , gle cup process” bore only a tangential relation to No. 04-1135 (Fed. Cir. Oct. 29, 2004), the Federal the equivalent in question, i.e., a process using Circuit affirmed the district court’s claim construc- “multiple cups.” The patentee had merely argued tion and judgment of noninfringement. that the amended claim did not have the disadvan- C.R. Bard, Inc. and its subsidiary (collectively tage of a large compressor at the end of the liner as “Bard”) asserted U.S. Patent No. 4,356,432 (“the in that prior art. There simply was no relationship ‘432 patent”) against United States Surgical between the narrowing amendment and a Corporation (“U.S. Surgical”). The ‘432 patent multiple-cup process, according to the Federal relates to an implantable prosthesis for repairing a Circuit. tissue or muscle wall, typically a hernia defect. The damages trial had been bifurcated from The infringement dispute centered around the the infringement issues and was conducted under proper claim construction of a claimed hollow plug. the assumption that two different processes infringe U.S. Surgical argued that the hollow plug implant the ‘012 patent. The Federal Circuit had previously must include a pleated surface. Because its accused determined, however, that only one of those implants did not include any pleated surfaces, U.S. processes infringed. Based on testimony from two Surgical reasoned, its implants did not infringe. previous trials and new evidence, on this appeal, The district court agreed. L L P . F I N N E G A N H E N D E R S O N F A R A B O W G A R R E T T D U N N E R
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