Wednesday, August 05, 2009

CAFC works through many issues in Exergen case

In Exergen, the CAFC reached many issues.

For starters, a jury finding of non-anticipation was reversed
and anticipation found.

“To anticipate a claim, a single
prior art reference must expressly or inherently disclose each claim limitation.” Finisar
Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).


We therefore reverse the jury’s finding that all claims of the ’205 patent [of Exergen] are not
invalid. Moreover, because “invalid claim[s] cannot give rise to liability for infringement,”
Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563, 1583 (Fed. Cir. 1983),
SAAT cannot be liable for infringement of this patent.

Attorneys were clobbered.

Footnote 2 states:

This was not the only occasion when an argument by Exergen’s counsel
drifted from the record or the court’s rulings. See J.A. 188 (119:21-22 (arguing, contrary
to the district court’s construction, that “an oral temperature is an internal temperature”
in the context of a forehead thermometer)), 200 (131:5 (dismissing as “word-sniffing” the
requirement that the lateral scan occur “across a forehead” rather than merely “across a
temporal artery”)); compare Pl.-Cross Appellant’s Br. 42 (arguing that customers’ use of
Safety 1st thermometer constitutes substantial evidence of induced infringement of the
’685 patent), with id. at 47 (conceding that “the record does not support a finding of
induced infringement of the ’685 patent with respect to the Safety 1st thermometer”).
While this form of advocacy may have resulted in a short-lived victory at trial, it does not
serve the interests of the client or the interests of the court. See Allen Eng’g Corp. v.
Bartell Indus., Inc., 299 F.3d 1336, 1356 (Fed. Cir. 2002) (“Counsel must remember that
they are not only advocates for their clients; they are also officers of the court and are
expected to assist the court in the administration of justice, particularly in difficult cases
involving complex issues of law and technology.”). Because we reverse the jury’s
findings of infringement, we need not consider whether counsel’s conduct so prejudiced
SAAT as to warrant a new trial.

[The attorneys for EXERGEN were Fish & Richardson.]

Of inequitable conduct:

SAAT argues that its allegations pass muster under the First Circuit’s “time,
place, and content” test for Rule 9(b) pleadings,


See Cent. Admixture, 482 F.3d at 1356 (stating that
whether inequitable conduct has been adequately pleaded is a question of Federal
Circuit law because it “pertains to or is unique to patent law”).


“[I]nequitable conduct,
while a broader concept than fraud, must be pled with particularity” under Rule 9(b).
Ferguson Beauregard/Logic Controls, Div. of Dover Resources, Inc. v. Mega Sys., LLC,
350 F.3d 1327, 1344 (Fed. Cir. 2003). A pleading that simply avers the substantive
elements of inequitable conduct, without setting forth the particularized factual bases for
the allegation, does not satisfy Rule 9(b).3 See King Auto., Inc. v. Speedy Muffler King,
Inc., 667 F.2d 1008, 1010 (CCPA 1981) (“Rule 9(b) requires that the pleadings contain
explicit rather than implied expression of the circumstances constituting fraud.”).

**On reasonable inference-->

A reasonable inference is one that is plausible and that flows logically from
the facts alleged, including any objective indications of candor and good faith. See
Greenstone v. Cambex Corp., 975 F.2d 22, 26 (1st Cir. 1992) (Breyer, C.J.) (declining
to infer fraudulent intent where “the complaint makes clear that Cambex publicized its
IBM memory ‘trade-in’ practice with a candor that seems inconsistent with knowledge of
illegality or fear of a lawsuit”)

**Of references-->

A reference may be many pages long, and its various
teachings may be relevant to different applications for different reasons. Thus, one
cannot assume that an individual, who generally knew that a reference existed, also
knew of the specific material information contained in that reference. See FMC Corp. v.
Manitowoc Co., Inc., 835 F.2d 1411, 1415 (Fed. Cir. 1987) (requiring actual knowledge
of the existence of the information alleged to be material; discussing “should have
known” standard in connection with the information’s materiality).


Am. Hoist & Derrick Co. v. Sowa & Sons, Inc.,
725 F.2d 1350, 1362 (Fed. Cir. 1984) (“Nor does an applicant for patent, who has no
duty to conduct a prior art search, have an obligation to disclose any art of which, in the
[district] court’s words, he ‘reasonably should be aware.’”).


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