Wednesday, December 22, 2010

Lazare Kaplan case on laser inscribing of diamonds

The decision in the Lazare Kaplan v. Photoscribe and GIA case was a mixed bag:

For the foregoing reasons, this court vacates the grant
of summary judgment of no literal infringement and the
verdict of non-infringement under the doctrine of equiva-
lents of claims 1 and 7 of ’351 Patent and remands for
further proceedings. We affirm the verdict of invalidity
and non-infringement of claim 18 of the ’351 Patent. We
also affirm the verdicts of non-infringement of claims 1,
24, 62, and 70 of the ’938 patent. Finally, this court
vacates the inequitable conduct findings, the exceptional case finding,
and the award of attorneys’ fees.

Of corroboration of testimony:

Generally, “[c]orroboration is required of any witness
whose testimony alone is asserted to invalidate a patent.”
TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d
1151, 1159 (Fed. Cir. 2004) (citation omitted).


This court is not persuaded by Lazare’s argument that
corroboration is lacking. In support of Gresser’s testi-
mony, the Defendants introduced a 1980 contract between
Gresser’s company, Group II, and Lazare, under which
Group II agreed to create what became the Gresser ma-
chine. The contract explicitly specified that the machine
would include “a rigid base to support laser, scanner
optics, and object fixture with adequate protective covers.”
The Defendants also produced a 1982 manual for the
machine that describes its operation and illustrates its
structure. This documentary evidence, created around
the time the machine was developed, provides strong
support for Gresser’s testimony. Cf. Sandt Tech., Ltd. v.
Resco Metal & Plastics Corp., 264 F.3d 1344, 1350-51
(Fed. Cir. 2001) (“Documentary or physical evidence that
is made contemporaneously with the inventive process
provides the most reliable proof that the inventor’s testi-
mony has been corroborated.”).

The Juicy Whip case is cited:

Because the annotations were
added to the photograph during litigation, the annota-
tions are no more reliable than the oral testimony they
accompanied. See Juicy Whip, Inc. v. Orange Bang, Inc.,
292 F.3d 728, 743 (Fed. Cir. 2002).

Inequitable conduct comes up:

To prove inequitable conduct, an accused infringer
must present clear and convincing evidence that “the
applicant (1) made an affirmative misrepresentation of
material fact, failed to disclose material information, or
submitted false material information, and (2) intended to
deceive the [PTO].” Star Scientific, Inc. v. R.J. Reynolds
Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008) (quoting
Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1363
(Fed. Cir. 2007)).


This court agrees with Lazare. Even assuming that
information concerning the structure of the Gresser
machine was highly material to the prosecution of the
’351 Patent, the district court clearly erred by inferring
that Lazare’s counsel intended to deceive the PTO by
withholding the information. Counsel provided an expla-
nation for not disclosing the machine, and there is noth-
ing to suggest that the decision to withhold was an
attempt to conceal. At best, the failure to disclose what
was believed to be cumulative information was a mistake
or exercise of poor judgment that does not support an
inference of intent to deceive. See Abbott Labs. v. Sandoz,
Inc., 544 F.3d 1341, 1354 (Fed. Cir. 2008) (“Mistake or
negligence, even gross negligence, does not support a
ruling of inequitable conduct.”).


This court again agrees with Lazare. Here, too, even
if we assume that the declaration is highly material, the
district court committed clear error when it found that
Lazare intended to deceive the PTO by withholding the
declaration. The court rejected the attorneys’ explanation
for withholding the declaration because the court believed
that a reference that discloses a range that overlaps or
includes, but is not coextensive with, a claimed range
cannot teach the claimed range. This is simply incorrect;
a prior art reference that discloses a range that encom-
passes or overlaps a claimed range generally is sufficient
to establish a prima facie case of invalidity. See, e.g., In re
Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (“We
therefore conclude that a prior art reference that discloses
a range encompassing a somewhat narrower claimed
range is sufficient to establish a prima facie case of obvi-
ousness.”); Ormco Corp. v. Align Tech., Inc., 463 F.3d
1299, 1311 (Fed. Cir. 2006) (“Where a claimed range
overlaps with a range disclosed in the prior art, there is a
presumption of obviousness.”). Although we give a court’s
credibility determinations considerable deference, a court
cannot, as was done here, “cloak the application of an
erroneous legal standard in the guise of a credibility
determination, and thereby shield it from appellate
review.” Andreu ex rel. v. Sec’y of Health & Human
Servs., 569 F.3d 1367, 1379 (Fed. Cir. 2009). When the
attorneys’ explanation for withholding the declaration is
considered, it is clear that intent to deceive is not the
single most reasonable inference that can be drawn from
the evidence. Therefore, the court clearly erred when it
determined that Lazare committed inequitable conduct
with respect to the ’938 Patent. See Scanner Techs. Corp.
v. ICOS Vision Sys. Corp. N.V., 528 F.3d 1365, 1376 (Fed.
Cir. 2008) (“Whenever evidence proffered to show either
materiality or intent is susceptible of multiple reasonable
inferences, a district court clearly errs in overlooking one
inference in favor of another equally reasonable infer-


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