A P R I L 2 0 0 0 Last The Federal Circuit month at M ont h at a Glance LAW FIRM SANCTIONED FOR FRIVOLOUS BICYCLE PEDAL PATENTS DO NOT REACH COUNTERCLAIM S ACCUSED INFRINGER Law firm’s failure to perform prelitigation Plaintiff has standing to assert patents, but infringement assessment violates Rule 11 fails to convince Court of infringement. and results in sanctions View E ng’g, Inc. v. Speedplay, Inc. v. Bebop, Inc. , No. 98-1527 Robotic Vision Sys., Inc. , No. 99-1399 (Fed. (Fed. Cir. Mar. 1, 2000) . . . . . . . . . . . . . . .7 Cir. Mar. 29, 2000) . . . . . . . . . . . . . . . . . .1 ACCUSED INFRINGER “SIDESTEPS” EQUIVALENT STRUCTURE UNDER STAIR-CLIM BER PATENT 35 U.S.C. § 112, ¶ 6 DEPENDS ON CON- Prosecution history estoppel bars application of doctrine of equivalents where reasons for TEXT OF INVENTION In accessing scope of equivalents under 35 adding limitation not given. Stairmaster U.S.C. § 112, ¶ 6, court considers whether Sports/ Med. Prods., Inc. v. Groupe Procycle, physical characteristics of “ means” term are Inc. , No. 99-1149 (Fed. Cir. Mar. 15, “ important to the invention.” IMS Tech., 2000)(nonprecedential decision) . . . . . . . .8 Inc. v. Haas Automation, Inc. , No. 99-1019 (Fed. Cir. Mar. 27, 2000) . . . . . . . . . . . . . .2 SOVEREIGN IM M UNITY “REIGNS” ON TRICKY TRANSLATIONS BRING ABOUT PATENTEE’S COM PLAINT AGAINST PTO INEQUITABLE CONDUCT A Fifth Amendment claim alone, without an Patentee fails to translate material portions underlying statutory or regulatory right to of foreign language document. Semiconduc- recovery cannot command a payment of Washington, DC money. Teacherson v. U.S. Patent & tor E nergy Lab. Co. v. Samsung E lecs., Co., 202-408-4000 98-1377 (Fed. Cir. Mar. 2, 2000) . . . . . . . .3 Trademark Office , No. 99-1465 (Fed. Cir. Mar. 10, 2000)(nonprecedential decision) . .8 FEDERAL CIRCUIT REFUSES TO “BURN” Palo Alto FUEL PATENT 650-849-6600 Court affirms denial of judgment as a matter PHONOM ETRICS DODGES TWO of law on anticipation and written descrip- BULLETS tion defenses. Union Oil Co. of Cal. v. Atlan- Court refuses to dismiss complaint without Atlanta tic Richfield Co. , No. 99-1066 (Fed. Cir. allowing some discovery in first case; and 404-653-6400 Mar. 29, 2000) . . . . . . . . . . . . . . . . . . . . .5 refuses to award attorney fees against Phonometrics in second case. Phonometrics, POOL CLEANER PATENT CANNOT “HOLD Inc. v. ITT Sheraton Corp. , No. 99-1130 (Fed. Tokyo WATER” Cir. Mar. 16, 2000)(nonprecedential decision); 011-813-3431-6943 Clear meaning of claim language prevents and Phonometrics, Inc. v. E CI Telecom Business infringement. Zodiak Pool Care, Inc. v. Networks, Inc. , No. 99-1161 (Fed. Cir. Hoffinger Indus., Inc. , No. 99-1224 Mar. 16, 2000(nonprecedential Brussels 011-322-646-0353 (Fed. Cir. Mar. 24, 2000) . . . . . . . . . . . . . .6 decision . . . . . . . . . . . . . . . . . . . .10 and 11 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 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 Law Firm Sanctioned for sole basis for filing these counterclaims was a Robotic officer’s belief based on his knowl- Frivolous Counterclaims edge of the Robotic patents, View’s own advertising and its claims to customers as to Michael A. Morin what its machines did, and the officer’s knowledge and understanding of the tech- [J udges: M ichel (author), Lourie, and nology required in the field. The district Linn] court did not levy any sanctions against Robotic, finding that Robotic was justified in In View E ngineering, Inc. v. Robotic Vision relying on Morrison for legal advice. Systems, Inc. , No. 99-1399 (Fed. Cir. Mar. Rule 11 of the Federal Rules of Civil 29, 2000), the Federal Circuit affirmed a dis- Procedure requires that attorneys certify by trict court’s decision to assess monetary their signature that (1) they have read the sanctions against a law firm for violating papers they file with the court and (2) the Fed. R. Civ. P . 11, where the firm did not pleading or motion is well grounded in fact, conduct a reasonable investigation before has a colorable basis in law, and is not filed filing counterclaims for patent infringement. for an improper purpose. Rule 11 is intend- View Engineering, Inc. (“ View” ) and ed to deter baseless filings and encourage Robotic Vision Systems, Inc. (“ Robotic” ) page 01 attorneys to conduct reasonable inquiries were competitors in the field of three- before filing papers with a court. Robotic dimensional vision technology, which is admitted that it never had access to the principally used to scan computer chips to accused View machines before filing the insure proper alignment of the leads. On counterclaims. Indeed, Robotic admittedly March 24, 1995, View filed a claim for filed the counterclaims for the purpose of declaratory judgment of noninfringement gaining access to View’s software and draw- and invalidity against Robotic based on one ings. Morrison never conducted a claim of Robotic’s patents. On J uly 18, 1995, the construction or infringement analysis before Morrison Law Firm (“ Morrison” ) filed an filing suit, relying instead solely on the answer on behalf of Robotic, counterclaim- Robotic officer’s belief that the View devices ing that View was infringing 120 claims of probably infringed. The district court deter- eight Robotic patents. mined that this investigation failed to pass On April 15, 1996, View moved for sum- Rule 11 muster. mary judgment (“ SJ ” ) of noninfringement as The Federal Circuit affirmed, reviewing to all eight patents, and also moved for the district court’s decision under the abuse sanctions for the filing of frivolous counter- of discretion standard. The Federal Circuit claims. Shortly thereafter, on April 22, interpreted Rule 11 as requiring, at a mini- 1996, Robotic withdrew its infringement mum, that a law firm apply the claims of allegations on two of the patents, and, by each patent at issue to an accused device May 20, 1996, withdrew its allegations as to and conclude that there is a reasonable three additional patents, so that just three basis for a finding of infringement before fil- patents remained in suit. ing suit. The Federal Circuit rejected In J une 1996, the district court granted Morrison’s sole proffered justification for its SJ of noninfringement of the three remain- improper counterclaims–that View had ing patents. The court also levied sanctions brought them upon itself by refusing against Morrison for $97,825, finding that Robotic presuit access to its products and Morrison did not conduct a reasonable documents–because View had no legal obli- investigation before filing its counterclaims gation to engage in prelitigation discovery for infringement. Specifically, Morrison’s or to cooperate otherwise. The Federal 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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