Friday, July 06, 2012

Split decision in GE/Mitsubishi appeal at CAFC in turbine case

The summary of GE v. ITC states:

The ruling that Mitsubishi’s turbines do not violate section 337 because they do not infringe the ’221 patent is affirmed. The ruling that the domestic industry requirement is not met as to the ’221 patent is vacated as moot. The ruling that there is no domestic industry corresponding to the ’985 patent is reversed, and the case is remanded for further proceedings with respect to the ’985 patent.

As to the '221 patent, the CAFC invoked Ohm's Law:

The Commission held that the ’221 claims are directed to a predetermined value of current or a proxy for current. The inclusion of a proxy for current comports with Linear Technology Corp. v. International Trade Commission, 566 F.3d 1049, 1060 (Fed. Cir. 2009), which held that “monitor- ing the current to the load” could be indirectly measured by voltage, for “once voltage is known, one skilled in the art would recognize that Ohm’s Law4 easily allows current to be calculated, therefore monitoring current indirectly by moni- toring voltage.” The Commission’s construction of “prede- termined value” as a value of current or a proxy for current “stays true to the claim language and most naturally aligns with the patent’s description of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting Renishaw PLC v. Marposs Societá per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). This claim construction is affirmed.

NTP v Rim came up:

A similar argument was rejected in NTP, Inc. v. Re- search in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005), where some of the claims recited a receiver “connected to” or “coupled to” a processor or that the receiver “transfers” information to the processor.

Linear Technology also came up:

We conclude that claim 15 requires that the circuit is coupled with the input of the inverter and the converter controller, whereby the current is shunted from the inverter and the rotor; this requirement does not limit the placement of the shunting circuitry to a location entirely external to the inverter. As in Linear Technology, “there is nothing in the claim language or specification that supports narrowly construing the terms to require a specific structural re- quirement or entirely distinct [circuits]. Rather, the [cir- cuits] must only perform their stated functions.” 566 F.3d at 1055.6

With footnote 6:

Mitsubishi submitted a letter in accordance with Fed. R. App. P. 28(j), arguing that General Electric stated a position before the PTO during the ongoing reexamination of the ’985 patent that contradicts its arguments here. General Electric responds that its argument distinguishing a certain reference does not conflict with its position here. On the information before us, the reexamination arguments do not affect our conclusion.

The CAFC pointed to a serious flaw in the Mitsubishi legal argument:

Mitsubishi also argues that the General Electric tur- bines embody a modification of the circuitry system in the ’985 patent, and that this modification is separately patented in General Electric’s U.S. Patent No. 7,239,036. Mitsubishi states that if General Electric’s turbines practice the subject matter claimed in a separate patent, they cannot practice the invention of the ’985 patent. That is not correct, for a separately patented invention may indeed be within the scope of the claims of a dominating patent. See Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1582 (Fed. Cir. 1996) (“The fact of separate patentability presents no legal or evidentiary presumption of nonin- fringement . . . .”); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1580 (Fed. Cir. 1984) (an improvement in a step of a patented method, even if separately patentable, may not avoid infringement). The scope of the ’985 patent is determined on its own terms, independent of whether other aspects or modifications of the technology are separately patented. The domestic industry requirement is not negated if the technology as employed in the domestic industry has been modified from its form when the patent was obtained.

Can one say diode and triode?


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