CAFC reverses WD Pa in Muniauction v. Thomson

The CAFC handed Thomson a big victory in the Muniauction case. Claims 1, 9, 14, 31, 36, and 56 of the asserted 6,161,099 patent were found obvious, and the others not infringed. $77 million in damages evaporated.

Two cases were important to the outcome -->

While the appeal was pending, this court issued two opinions relevant to issues
presented by this case. First, on August 20, 2007, In re Seagate Technology, LLC
changed the standard of willful infringement from one akin to negligence to that of
objective recklessness. 497 F.3d 1360, 1371 (Fed. Cir. 2007). Second, on September
20, 2007, BMC Resources, Inc. v. Paymentech, L.P. held that where steps of a method
claim are performed by multiple parties, the entire method must be performed at the
control or direction of the alleged direct infringer. 498 F.3d 1373, 1380–81 (Fed. Cir.
2007).


Law on JMOL was reviewed:

When reviewing the denial of a JMOL motion, “‘[t]his court reviews a jury's
conclusions on obviousness, a question of law, without deference, and the underlying
findings of fact, whether explicit or implicit within the verdict, for substantial evidence.’”
Dippin’ Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed. Cir. 2007) (quoting LNP Eng’g
Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347, 1353 (Fed. Cir. 2001)); accord
PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007)
(citing Caver v. City of Trenton, 420 F.3d 243, 262 (3d Cir. 2005)). “Those factual
underpinnings include the scope and content of the prior art, differences between the
prior art and the claims at issue, and the level of ordinary skill in the art.” Dippin’ Dots,
476 F.3d at 1343 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).

The "predictability" aspect of KSR came up:

A central principle in this inquiry is that “a court
must ask whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. at 1740. On the record before
us, we answer this question in the negative and conclude that claims 1 and 31 of the
’099 patent are obvious as a matter of law.

Leapfrog came up:

Finally, the combination of known elements present in this case is quite similar to
that in Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007).
In Leapfrog, the court ruled that “[a]ccommodating a prior art mechanical device that
accomplishes [the goal of teaching a child to read phonetically] to modern electronics
would have been reasonably obvious to one of ordinary skill in designing children’s
learning devices.” 485 F.3d at 1161. The court reached this result based in part on its
reasoning that “[a]pplying modern electronics to older mechanical devices has been
commonplace in recent years.” Id. The record in this case demonstrates that adapting
existing electronic processes to incorporate modern internet and web browser
technology was similarly commonplace at the time the ’099 patent application was filed.

Secondary considerations arose, with Ruiz v. Chance mentioned AND

Put another way, commercial success or other secondary
considerations may presumptively be attributed to the patented invention only where
“‘the marketed product embodies the claimed features, and is coextensive with them.’”
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006) (quoting
Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir.
2000)).

The impact on patentability of an award was negated:

Thus, the 1999 award lacks the required nexus with the scope of the claims.

Also, obvious matter infects non-obvious matter:

We further note that our conclusion as to the nexus between this award
and the claims is consistent with the long-established rule that “[c]laims which are broad
enough to read on obvious subject matter are unpatentable even though they also read
on nonobvious subject matter.” In re Lintner, 458 F.2d 1013, 1007 (CCPA 1972) (citing
In re Mraz, 455 F.2d 1069, 1073 (CCPA 1972)).

Of method claims:

The law of this circuit is axiomatic that a method claim is directly infringed only if each step of the
claimed method is performed. BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d
1373, 1378–79 (Fed. Cir. 2007)

NTP v. RIM appeared:

see also NTP, Inc. v. Research in Motion, 418 F.3d 1282, 1317–18 (Fed. Cir. 2005) (holding that users of accused system
could not infringe method claims in the United States because one step of the method
was performed in Canada).




Of experts:

Only Mr. O’Neill’s testimony on cross-examination is relevant to the inquiry of
whether the automatic computation step is disclosed by the prior art. When testifying on
invalidity, “[a]n expert must ‘[compare] the construed claims to the prior art.’” Tivo, Inc.
v. Echostar Comm’ns Corp., 516 F.3d 1290, 1311 (Fed. Cir. 2008) (second alteration in
original) (quoting Helifix, Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000)).
As discussed above, Mr. O’Neill explicitly stated that his original conclusion on direct
examination was based on the absence of “an automatically computing calculator” from
Parity®, a limitation not required by the claims.

Of dependent claims:

A conclusion of noninfringement as to the independent claims
requires a conclusion of noninfringement as to the dependent claims. See, e.g.,
Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed. Cir. 2007).