Wednesday, February 06, 2013

Mixed decision in Accent v. Leggett

From Accent v. Leggett

Accent Packaging, Inc. (“Accent”) appeals the district court’s grant of summary judgment to Leggett & Platt, Inc. (“Leggett”) of noninfringement of claims 1-5 of U.S. Patent No. 7,373,877 (“’877 patent”) and of claims 1, 3, 4, 7, and 10-14 of U.S. Patent No. 7,412,992 (“’992 patent”). As part of its appeal, Accent challenges the district court’s construction of the terms “each” and “a respective one” in the claims of the ’877 patent. Because the district court erred in its construction, we reverse the district court’s grant of summary judgment to Leggett with respect to claims 1-4 of the ’877 patent and remand to the district court to enter summary judgment in favor of Accent on those claims. We affirm, however, the district court’s grant of summary judgment to Leggett with respect to claim 5 of the ’877 patent and all of the asserted claims of the ’992 patent. We also affirm the district court’s denial of Accent’s motion for additional discovery pursuant to Fed. R. Civ. P. 56(d), as well as its dismissal of Accent’s Missouri Uniform Trade Secrets Act (“MUTSA”) cause of action.

Of the use of the word "a" or "an" -->

See Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (holding that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open- ended claims containing the transitional phrase comprising” unless a patentee has “‘evidence[d] a clear intent’ to limit ‘a’ or ‘an’ to ‘one’” (quoting KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)).

Of trade secrets -->

Accent’s assertions, however, are belied by its own complaint, which acknowledges that Accent’s 470 device was sold in the regular stream of commerce. J.A. 22. Pursuant to MUTSA, a trade secret must be the “subject of efforts that are reasonable under the circumstances to maintain its secrecy.” Mo. Rev. Stat. § 417.453(4)(b). But other than a rote citation of this standard, Accent’s com- plaint does not allege any actual efforts to keep the specifications and tolerances of its 470 device a secret. Instead, Accent’s complaint alleges that Leggett “obtained its knowledge of the specifications and tolerances of ACCENT’s 470 Wire Tier System” from a 470 device being delivered to an Accent customer. J.A. 24-25. Information that can be obtained from examining products sold into the public domain, however, cannot constitute a trade secret. See, e.g., Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 155 (1989) (noting that the public is “free to discover and exploit . . . trade secret[s] through reverse engineering of products in the public domain”).

In passing, from a law review article related to Metallizing Engineering:

As Congress worked toward passing patent reform legislation that will grant patent priority to those who are first to file rather than first to invent, an old chestnut of a case penned by Judge Learned Hand some 65 years ago attracted the attention of lawmakers and commentators. The case of Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. dealt with the thorny problem of granting patents those who have, for some time before patenting, practiced their inventions in secret. The Second Circuit held that one who competitively exploits a secret invention at a time that precedes the filing of a patent application on that invention by a year or longer forfeits the right to the patent. While the rule of Metallizing, though never codified, has been widely followed by other courts, the 2011 debates have raised the question of whether the Metallizing forfeiture should be retained in a first-to-file world.

Also from Lamb-Weston v. McCain, 78 F.3d 540 (CAFC 1996):

Because patented before Lamb-Weston's invention, the references disclosed to the patent examiner were prior art under section 102(a) of title 35. Similarly, the knowledge and use of waffle fries in the 1930s occurred before the invention and are prior art under section 102(a). The potato products produced from the Matsler and Jayne slicing apparatus were not under nondisclosure agreements and therefore qualify as prior art under section 102(a). This court is not applying a new rule of obviousness in this case. These relevant references count collectively toward the teachings of prior art as a whole. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 225 USPQ 20 (Fed.Cir.), cert. denied, 474 U.S. 843, 106 S.Ct. 131, 88 L.Ed.2d 108 (1985).


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