Friday, March 13, 2009

Paul Hastings gets Rule 11 sanctions in patent case

The NLJ gave some background:

After losing a motion for a temporary restraining order, at which time Judge Pfaelzer raised questions about the patent's validity, ICU and its lawyers at Paul Hastings filed an amended complaint with new infringement claims. With the new claims, ICU accused Alaris of infringing on a valve that did use a "spike."

Judge Pfaelzer found that the patent with the "spikeless" claims was invalid and that the "spike" claims weren't infringed by Alaris' valves. The "frivolous construction and assertion of the 'spike' claims in the amended complaint, concurrently justified sanctions under Rule 11," she wrote at the time.

On top of that, according to the courts' rulings, internal documents revealed in the district court case showed that ICU itself didn't even believe that Alaris was infringing on its "spike" claims.

The NLJ had some interesting quotes:

"Normally, [patent lawyers] do thorough prefiling investigations or they don't take positions that are contrary to their own records," said Neil Smith.

At the Federal Circuit, ICU Medical was represented by Fish & Richardson's Frank Scherkenbach. Asked for comment, Scherkenbach e-mailed that "we [Fish & Richardson] were not counsel who were unsuccessful in, and sanctioned by, the District Court."

Of legal analysis:

ICU further argues that we should not import the functional limitation of piercing
where that function is not recited in the claim. We have explained, however, that it is
“entirely proper to consider the functions of an invention in seeking to determine the
meaning of particular claim language.” Medrad, Inc. v. MRI Devices Corp., 401 F.3d
1313, 1319 (Fed. Cir. 2005).

Although claim differentiation counsels against construing the spike term to
require the pointed/piercing features of claim 13, this doctrine is not a rigid rule but
rather is one of several claim construction tools. See Nomos Corp. v. Brainlab USA,
Inc., 357 F.3d 1364, 1368 (Fed. Cir. 2004); Laitram Corp. v. Rexnord, Inc., 939 F.2d
1533, 1538 (Fed. Cir. 1991) (quoting Autogiro Co. of Am. v. United States, 384 F.2d
391, 404 (Ct. Cl. 1967) (“Claim differentiation is a guide, not a rigid rule. If a claim will
bear only one interpretation, similarity will have to be tolerated.”)). We agree with the
district court.

Written description came up:

“[T]he purpose of the written description requirement is to ‘ensure that the scope
of the right to exclude, as set forth in the claims, does not overreach the scope of the
inventor’s contribution to the field of art as described in the patent specification.’” Univ.
of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004) (quoting Reiffin
v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000)). This requirement protects
the quid pro quo between inventors and the public, whereby the public receives
“meaningful disclosure in exchange for being excluded from practicing the invention for
a limited period of time.” Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 970
(Fed. Cir. 2002). To satisfy the written description requirement, a patent applicant must
“convey with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.

LizardTech came up-->We addressed a similar issue in LizardTech, Inc. v. Earth
Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005), where a patent specification
described a method of digital image compression.

-->Of bad acts-->

These misrepresentations related to (1) ICU’s assertion of claims in the ’509 patent that
were identical to claims in the ’592
patent (i.e., assertion of double-patented claims); (2) ICU’s assertion of more double-
patented claims from the ’509 patent even after Alaris and the district court warned ICU
of the double-patenting issue; (3) ICU’s misrepresentation of Federal Circuit authority;
(4) ICU’s representation that figures 13 and 20–22 of the common specification “clearly”
disclosed a spikeless embodiment, only to later acknowledge that these figures do not
disclose such an embodiment and state that its representation was an “honest mistake.”

**On Rule 11, see Philip Brooks' Patent Infringement Updates,
including the text:

Via Rule 11 of the Federal Rules of Civil Procedure all actions brought in federal court have a pre-filing investigation requirement. Rule 11 demands that before any claim is asserted, the party asserting the claim must have performed an "inquiry reasonable under the circumstances" as to the legal and factual merits of the claim. Fed. R. Civ. P. 11(b). The Supreme Court has instructed that Rule 11 "imposes on any party who signs a pleading, motion, or other paper – whether the party's signature is required by the Rule or is provided voluntarily – an affirmative duty to conduct a reasonable inquiry into the facts and the law before filing, and that the applicable standard is one of reasonableness under the circumstances." Business Guides, Inc. v. Chromatic Communications Enterprises, Inc., 498 U.S. 533, 551 (1991) (interpreting Rule 11 pre-1993 amendments).


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