The Sughrue Review December in the Federal Circuit QUALCOMM INC. V. BROADCOM CORP. Volume 1, Issue 1 Federal Circuit 2007-1545, 2008-1162 (December 1, 2008) January 28, 2009 prior to a standard’s adoption, by requir- Qualcomm deals with the consequences of ing participants to reveal and/or give up remaining silent when there is a duty to dis- Inside this issue: IPR covering a standard. The Federal Cir- close patents in a standards-setting organi- cuit affirmed the district court’s determi- zation (“SSO”). Qualcomm did not disclose Qualcomm Inc. v. Broad- 1 nation that Qualcomm, as a participant two patents to the Joint Video Team (“JVT”) com Corp in the JVT prior to the release of the stan- SSO prior to the release of the H.264 stan- dard, did have IPR disclosure obligations dard in May 2003. The issue in Qualcomm Rentrop v. The Spectra- 1 under the written policies of both JVT and was “whether Qualcomm waived its right to netics Corporation its parent organization. The Federal Cir- assert its patents by failing to disclose them cuit, however, held that remedy of unen- to the JVT SSO.” The Court found that many Hyatt v. Director, Patent 2 forceability against the world was too industry participants of SSOs attempt to and Trademark Office broad, and remanded with instructions to avoid “patent hold-up,” which can occur enter an unenforceability remedy limited when participants fail to disclose relevant Ricoh Company Ltd. v. 2- in scope to H.264-compliant products. intellectual property rights (“IPR”) to an SSO 3 Quanta Computer Inc. RENTROP v. THE SPECTRANETICS CORPORATION Sundance Inc. v. Demonte 4 Fabricating Ltd. Federal Circuit 2007-1560 (December 18, 2008) trial motions until almost four months after the decision Rentrop, inventor of U.S. Patent No. 6,673,064 directed to in KSR . The Federal Circuit then held that when there an excimer laser catheter, sued Spectranetics for infringe- is a relevant change in the law before entry of final ment. Spectranetics asserted defenses including obvious- judgment, a party must generally notify the district ness and inequitable conduct, and counterclaimed to cor- court; if a party fails to do so, it waives arguments on rect inventorship. The jury found that the accused prod- appeal that are based on that change in the law. Thus, ucts infringed the ’064 patent, that the ’064 patent was not Spectranetics waived its argument based on KSR . De- invalid, and that Rentrop was the sole inventor of the ’064 spite the waiver, the Federal Circuit commented that the patent. The district court denied Spectranetics’ motion for jury instructions criticized by Spectranetics were appro- judgment as a matter of law on infringement and inequita- priate because--though given before KSR --the court in- ble conduct. Spectranetics appealed. This summary will structed the jury on the TSM principle in unrigid terms. address two of the issues on appeal. On the second issue, Spectranetics argued that Ren- Spectranetics argued: i) that the ’064 patent was so obvious trop’s nondisclosure or inadequate disclosure of several based on the prior art presented to the jury that the only items of prior art and his minimization of the role of possible explanation for the jury not finding the claim to be Spectranetics in the invention was inequitable conduct. obvious was that the district court gave a rigid “teaching, The district court determined that there was a low level suggestion or motivation” jury instruction in violation of the of materiality and weak inference of intent. Therefore, Supreme Court’s intervening decision in KSR ; and ii) that the Federal Circuit said that Spectranetics would need the district court erred by not finding inequitable conduct to provide compelling evidence of materiality and intent based on Rentrop’s inadequate disclosure during prosecu- to deceive in order to reverse the district court’s rejec- tion. tion of the inequitable conduct defense and that it had not done so. On the first issue, the Federal Circuit noted that although post-trial briefing was completed over two months before Thus, the judgment of the district court was affirmed KSR was decided, the district court did not decide the post-
The Sughrue Review December in the Federal Circuit Page 2 HYATT V. DIRECTOR, PATENT AND TRADEMARK OFFICE Federal Circuit 2007-1050, 1051, 1052 and 1053 (December 23, 2008) The USPTO appealed from a ruling which its review of the examiner’s Federal Circuit disagreed with the in favor of Hyatt by the U.S. District rejection of groups of claims in Board, and held that a group of Court for the District of Columbia Hyatt’s applications was based. The claims rejected under a particular (“DC”). Hyatt’s approximately 2400 district court held that “the Board statutory section do not share a claims in 12 related applications should not have grouped claims that common ground of rejection under were rejected during prosecution, have been rejected for lack of a writ- section 1.192(c)(7), and USPTO is and the rejection was upheld by the ten description unless those claims consequently not allowed to con- “ In this case, DeMonte had Board of Patent Appeals and Inter- share a limitation that has been sider the group on the basis of a ferences (“Board”). The Board re- found to have not been disclosed by single representative claim unless failed to demonstrate any jected the 2400 claims based on 21 the specification.” The district court the claims share a common limita- representative claims. Hyatt remanded the case to the Board with tion that fails under the statutory possible relevancy …” brought suit under 35 U.S.C. §145, instructions to regroup and recon- section. The Federal Circuit stated arguing that the Board should have sider Hyatt’s claims according to that the PTO plainly erred in its in- considered his claims separately, or appropriate representative claims. terpretation of 1.192(c)(7), and the alternatively, that the Board improp- district court was thus correct to re- erly selected the 21 claims in his Section 1.192(c)(7) provides, in part, mand Hyatt’s appeals to the Board Appeal Brief as representative of the that claims can be grouped together with instructions to regroup and re- 2400 claims. The Board countered if they share a ground of rejection. consider Hyatt’s claims according to that the selection of the 21 claims The USPTO argued on appeal that appropriate representative claims. was proper because Hyatt failed to “ground of rejection” refers simply The Federal Circuit stated, however, separately argue the other claims, to the statutory section under which that the Board is free on remand to and that all the claims were properly a claim was rejected (for example, apply the rule of waiver to any grouped because each group was lack of written description), and as grounds of rejection not contested rejected under the same statutory such, it can choose a claim rejected by Hyatt in his initial appeals, pro- provision, such as lack of written for failure to satisfy this requirement vided such grounds do not become description. The district court found as representative of all claims re- relevant on remand due to realign- that, even though Hyatt failed to jected for this reason—regardless of ment of the representative claims or separately argue all of his claims, whether the limitation in the repre- other aspects not previously at is- the Board had failed to comply with sentative claim that lacks written sue. 37 C.F.R. § 1.192(c)(7) when select- description support is present in the ing the representative claims on non-representative claims. The RICOH COMPANY, LTD. V. QUANTA COMPUTER, INC. F ederal Circuit 2007-1567 (December 23, 2008) Ricoh appeals to the Court of Ap- invalid for obviousness; accused and consequently, the summary peals for the Federal Circuit devices do not practice the methods judgment of noninfringement was (“CAFC”) from a summary judgment of the asserted claims of USP vacated on two issues: (1) whether dismissing all claims against Quanta 6,172,955 (‘955 patent); and Ricoh QCI, QSI, and QCA (collectively Computer, Inc. (“QCI”), Quanta failed to present evidence sufficient “Quanta”) contributorily infringed Storage, Inc. (“QSI”), Quanta to create a material issue of fact as to the ’552 and ’755 patents; and (2) Computer USA, Inc. (“QCA”), and either direct or indirect whether QSI induced infringement NU Technology, Inc. (“NU”). The infringement of USP 5,063,552 (‘552 of the ’552 and ’755 patents. The District Court for the Western patent) and USP 6,661,755 (‘755 remainder of the district court’s District of Wisconsin on summary patent) by Quanta. The Federal rulings were affirmed. judgment ruled that: asserted claims Circuit held that the district court of USP 6,631,109 (‘109 patent) are applied erroneous legal standards, Ricoh claimed that Quanta directly
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