The Federal Circuit month at DEFENDANTS RECALCITRANCE DURING - PDF document

Last The Federal Circuit month at DEFENDANT’S RECALCITRANCE DURING CORPORATE ESPIONAGE AND RELATED PLAINTIFF’S PREFILING INVESTIGATION DISCOVERY ABUSES WARRANT NEW IM M UNIZES PLAINTIFF FROM RULE 11 TRIAL AND ADDITIONAL SANCTIONS SANCTIONS Court calls for sanctions where corporation Where Defendant refuses to cooperate steals liquid crystal display invention by with Plaintiff’s Fed. R . Civ. P. 11 presuit secretly disassembling and photographing investigation into infringement, Plaintiff prototype and attorneys hide photographs was justified in bringing suit even though and deposition testimony. Advanced infringement could not be confirmed. Display Sys., Inc. v. Kent State Univ. , Hoffman-La Roche, Inc. v. Invamed, Inc. , No. 99-1012 (Fed. Cir. May 18, 2000) . . .4 No. 99-1466 (Fed. Cir. May 23, 2000) . . .1 HYATT’S CLAIM S TO DISPLAY DEVICE ANTICIPATED ONE SPRING NOT EQUIVALENT TO During examination, claims are given their TWO broadest reasonable interpretation consis - Specific recitation to “ two spring” tent with the specification. In re Hyatt , assembly and use of phrase “ consisting No. 99-1182 (Fed. Cir. May 12, 2000) . . .5 of” restricts scope of equivalents. Vehicular Techs. Corp. v. Titan Wheel FEDERAL CIRCUIT REVERSES DISTRICT Int’l, Inc. , No. 99-1042 (Fed. Cir. May COURT AND ADOPTS SPECIAL M ASTER’S 22, 2000) . . . . . . . . . . . . . . . . . . . . . . . .1 FINDING OF OBVIOUSNESS Court agrees with Special Master’s fact find- ings concerning teachings of prior art and Washington, DC 202-408-4000 ANDA DOES NOT INFRINGE rejects district court’s reliance on secondary Court affirms district court’s holding considerations. Riverwood Int’l Corp. v. that Defendant’s Abbreviated New Drug Mead Corp. , No. 99-1274 (Fed. Cir. Palo Alto Application (“ ANDA” ) does not infringe May 17, 2000) . . . . . . . . . . . . . . . . . . . .5 650-849-6600 literally or under the doctrine of equivalents. Bayer AG v. E lan Pharm. EXCLUSIVE LICENSEE ENJ OINS PATENTEE Research Corp., No. 99-1365 (Fed. Cir. FROM M AKING PATENTED PRODUCT Atlanta May 12, 2000) . . . . . . . . . . . . . . . . . . . .2 Damages calculation remanded for clear 404-653-6400 accounting and less speculative determina- tion of lost profits. U.S. Valves, Inc. v. “AIR-TIGHT” CLAIM LANGUAGE DOES Dray , No. 99-1586 (Fed. Cir. May 22, Tokyo NOT PERM IT INFRINGEM ENT 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . .6 011-813-3431-6943 Expert testimony, while useful to clarify patented technology, may not be used FEDERAL CIRCUIT J OINS DISTRICT COURT to correct errors, erase limitations, or Brussels ON INTERPRETATION OF “UNJ OINED” 011-322-646-0353 otherwise diverge from the description of Court agrees with claim interpretation and the invention contained in the patent affirms summary judgment of noninfringe- documents. Aqua-Aerobic Sys., Inc. v. ment. Herstein v. Comptek Fed. Sys., Inc. , Aerators, Inc. , No. 98-1465 (Fed. Cir. No. 99-1104 (Fed. Cir. May 18, 2000) May 3, 2000) . . . . . . . . . . . . . . . . . . . . .3 (nonprecedential decision) . . . . . . . . . . .7 EDITED BY VINCE KOVALICK This publication brings you a synopsis of patent cases decided last m onth by the United States Court of Appeals for the Federal Circuit based on slip opinions received from the court. You can review and dow nload the full text of each opinion by visiting our Web site ( www.finnegan.com ).

L A ST M O N T H AT T H E F E D E R A L C I R C U I T sanctions and attorney fees. The district court Defendant’s Recalcitrance During found for R oche, and Torpharm appealed. Plaintiff’s Prefiling Investigation The Federal Circuit affirmed, holding that Immunizes Plaintiff from Rule 11 the district court had not abused its discretion in Sanctions finding R oche’s prefiling inquiry to be reason- able, since “ [i]t is difficult to imagine what else [R oche] could have done to obtain facts relating Arie M. Michelsohn to Torpharm’s alleged infringement of their process patents . . . . If Torpharm initially had [J udges: Friedman (author), Mayer, and told [R oche] under a confidentiality agreement Gajarsa] the processes to manufacture the drug as it sub- sequently did it could have avoided this litigation In Hoffman-La Roche, Inc. v. Invamed, Inc. , and the expenses incurred in defending it.” No. 99-1466 (Fed. Cir. May 23, 2000), the Hoffman-La Roche , slip op. at 8-9. Federal Circuit affirmed a district court decision Finally, the Court agreed with the district rejecting Defendant’s allegations of R ule 11 viola- court’s refusal to entertain Torpharm’s pleading tions and unethical conduct by Plaintiffs. that R oche had violated R ule 4.2 of the New Hoffman-La R oche, Inc. (“ R oche” ) owns a J ersey R ules of Professional Conduct by contact- method patent covering a process for making ing Torpharm’s president directly rather than ticlopidine hydrochloride (“ TICLID” ). Torpharm, outside counsel, holding that “ [t]he enforcement Inc. (“ Torpharm” ) filed an abbreviated new drug 01 page of [the rule] is the function of . . . state authori- application with the Food and Drug ties . . . [and] not the responsibility of the United Administration (“ FDA” ) to market a generic form States District Court.” Hoffman-La Roche , slip op. of TICLID. R oche asked Torpharm to provide at 13. information on its manufacturing process, but Torpharm refused. Torpharm did supply R oche with samples of its drug, but R oche was unable One Spring Not Equivalent to to ascertain through analytical testing whether Two Torpharm was using R oche’s process. R oche then sued Torpharm for infringement, noting Torpharm’s recalcitrance in its complaint and Kimani P. Clark indicating the need to resort to the judicial process to determine whether Torpharm was [J udges: Plager, Clevenger, and Rader ( per infringing. curiam) ] Torpharm moved to dismiss for failure to state a claim. R oche then contacted Torpharm’s In Vehicular Technologies Corp. v. Titan Wheel president, who gave R oche a go-ahead to discuss International, Inc. , No. 99-1042 (Fed. Cir. May settlement. R oche offered to withdraw suit if, 22, 2000), the Federal Circuit affirmed a district pursuant to a confidentiality agreement, court’s grant of summary judgment (“ SJ ” ) of Torpharm’s disclosure of its process showed that noninfringement of a patent directed to a lock- it did not infringe R oche’s patent. R oche sent ing differential for use in automobiles. the draft confidentiality agreement both to Vehicular Technologies Corp. (“ PowerTrax” ) Torpharm’s president and its outside counsel. brought suit against Titan Wheel International, Torpharm’s president returned the draft agree- Inc. (“ Tractech” ) for infringement of U.S. Patent ment with a handwritten note asking whether No. 5,413,015 (“ the ‘015 patent” ), which claims R oche should pay Torpharm’s legal costs. R oche a double-spring assembly in a locking differen- responded that it would not pay Torpharm’s tial. A differential is a component of an automo- costs because Torpharm had incurred the costs bile axle that distributes torque to the wheels of as a result of its failure to cooperate. the vehicle and allows wheels on opposite sides After determining that Torpharm’s process of the vehicle to spin at different rates. The ‘015 did not infringe, as agreed to, R oche dismissed patent’s claims require a differential having “ a its case. Torpharm then sued R oche, contending spring assembly consisting of two concentric that R oche’s complaint violated R ule 11 of the springs.” Tractech’s accused product contains a Federal R ules of Civil Procedure, and asking for single spring with a plug. . F I N N EG A N H EN D ERSO N FA RA B O W G A RRET T D U N N ER L L P