Monday, September 01, 2008

CAFC presents detailed opinion in 800 Adept case

The CAFC smacked down a decision of MD Fl in 800 Adept v. Murex:

After thorough consideration of all the issues in the case, we conclude that the
trial court erred regarding a critical claim construction issue in the Adept patents, one
that permitted the jury to make incorrect findings. Under the correct claim construction,
no reasonable jury could find that Targus infringes the asserted claims of Adept’s
patents; accordingly, we reverse the trial court’s judgment of infringement. For the
reasons we shall explain, we also reverse the trial court’s judgment for Adept on its
tortious interference claim. In light of these determinations, we vacate the trial court’s
damages award, the permanent injunction, and the judgment with respect to willfulness,
enhanced damages, and attorney fees.

Of relevance:

On the nineteenth day of trial, in response to Adept’s
argument, and over the objection of Targus’s counsel, Chief Judge Fawsett added a
sentence to the claim construction. The final jury instruction regarding this limitation

The term “assigning” as used in the third element of the claims of
the ’111 and ’689 Patents refers to “a designation made prior to the
telephone call of the first parties.” However, the ’111 and ’689 patents do
not exclude calculations made during the telephone call.

As we explain more fully below, the addition of the “However . . . ” sentence to the
assigning limitation changed the dynamic of the trial.

The usual cases were cited:

Though in claim construction matters we give due weight to a trial court’s claim
construction, ultimately claim construction is a matter of law the final responsibility for
which lies with us. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir.
1998) (en banc). As usual, we start with the language of the claims themselves.
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). The relevant
language (see, e.g., claim 29 of the ’111 patent, above) is: “assigning to the physical
location of said potential first parties a telephone number of a service location of a
second party that will receive calls . . . .”8 ’111 patent col.15 ll.33-35.

Prosecution disclaimers issues arose:

The doctrine of prosecution disclaimer to which Adept refers is typically invoked
to limit the meaning of a claim term that would otherwise be read broadly. See id. at
1324 (“[W]here the patentee has unequivocally disavowed a certain meaning to obtain
his patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary
meaning of the claim congruent with the scope of the surrender.” (emphasis added));
see also Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1325 (Fed. Cir. 2002) (construing
the broad term “calcium orthophosphate” to exclude monocalcium orthophosphate
based on prosecution disclaimer although excluded compound was within the ordinary
and accustomed meaning of the claim term); Southwall Techs., Inc. v. Cardinal IG Co.,
54 F.3d 1570, 1576-77 (Fed. Cir. 1995)

Of "hypothetical" situations:

Even if the mobile telephone claims are rendered inoperative by a proper claim
construction, preserving the validity of unasserted claims is an insufficient reason to
ignore the meaning of the claims actually asserted in the case. See Intamin Ltd. v.
Magnetar Techs. Corp., 483 F.3d 1328, 1337 (Fed. Cir. 2007).

Standards for JMOL:

When a patent infringement verdict is based on an incorrect claim construction, we reverse the trial
court’s denial of a motion for judgment as a matter of law if no reasonable jury could
have found infringement under the proper claim construction. Finisar Corp. v. DirecTV
Group, Inc., 523 F.3d 1323, 1333 (Fed. Cir. 2008).

On tortious interference:

State tort claims against a patent holder, including tortious interference claims, based on enforcing a patent in the
marketplace, are “preempted” by federal patent laws, unless the claimant can show that
the patent holder acted in “bad faith” in the publication or enforcement of its patent. Id.
at 1355; Hunter Douglas, Inc. v. Harmonic Design, Inc., 153 F.3d 1318, 1336-37 (Fed.
Cir. 1998). As the Supreme Court said long ago, “Patents would be of little value if
infringers of them could not be notified of the consequences of infringement, or
proceeded against in the courts. Such action, considered by itself, cannot be said to be
illegal.” Virtue v. Creamery Package Mfg. Co., 227 U.S. 8, 37-38 (1913).

On bad faith:

The issue in this case is whether Adept presented to the jury sufficient facts, if
believed, that a reasonable jury could find for Adept on the issue of Targus’s bad faith.
This “bad faith” standard has objective and subjective components. Dominant
Semiconductors Sdn. Bhd. v. Osram GmbH, 524 F.3d 1254, 1260 (Fed. Cir. 2008). The
objective component requires a showing that the infringement allegations are
“objectively baseless.” Globetrotter Software, Inc. v. Elan Computer Group, Inc., 362
F.3d 1367, 1375 (Fed. Cir. 2004). The subjective component relates to a showing that
the patentee in enforcing the patent demonstrated subjective bad faith. See id. Absent
a showing that the infringement allegations are objectively baseless, it is unnecessary to
reach the question of the patentee’s intent.

Of the many debates about "patents as property"-->

Because of the value placed on property rights, which issued patents share, see 35 U.S.C. § 261
(“[P]atents shall have the attributes of personal property.”); Consol. Fruit-Jar Co. v.
Wright, 94 U.S. 92, 96 (1876) (“A patent for an invention is as much property as a
patent for land.”
); Kearns v. Gen. Motors Corp., 94 F.3d 1553, 1555 (Fed. Cir. 1996)
(“By statutory and common law, each patent establishes an independent and distinct
property right.”), and in light of the underlying jurisprudential basis for the bad faith
standard, rooted as it is in Supreme Court cases and Constitutional principles, see
Globetrotter, 362 F.3d at 1375-77, a party attempting to prove bad faith on the part of a
patentee enforcing its patent rights has a heavy burden to carry.


Post a Comment

<< Home