Thursday, March 17, 2011

Attorney fee award under 285 reversed in Old Reliable case

An admission in deposition that products do the same thing is NOT an admission of anticipation. Recognizing this, the CAFC reversed an award of attorneys fees made against Old Reliable.

The CAFC noted:

“Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference.” In re Skvorecz, 580 F.3d 1262, 1266 (Fed. Cir. 2009); see also Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (explaining that “invalidity by anticipation requires that
the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently”). Regardless of whether the VT-2 and the commercial embodiment of the ’950 patent did “[e]xactly the same thing,” there could be no anticipation unless the VT-2 disclosed, either expressly or inherently, all the structural limitations contained in the asserted apparatus claims. See Skvorecz, 580 F.3d at 1268 (explaining that a prior art device did not anticipate because it did not contain the “offset” structure disclosed in the asserted claims); Applied Med. Res. Corp. v. United States Surgical Corp., 147 F.3d 1374, 1380 (Fed. Cir. 1998) (emphasizing that a prior art device does not anticipate “simply by possessing identically named parts, unless these parts also have the same structure or otherwise satisfy the
claim limitations”); In re Ruskin, 347 F.2d 843, 846 (CCPA 1965) (Even where a prior art device is the “func-tional equivalent” of a patented product, it does not anticipate unless it discloses the structure required by the asserted claims.). Because Old Reliable pointed to alleged structural differences between the VT-2 and the commer-cial embodiment of the ’950 patent, it was not required to concede that its patent was anticipated even following inventor testimony that the two products were function-ally equivalent.2

**The underlying problem facing Old Reliable in the case:

Where a patent is granted in a field of invention abundant with prior art, a patentee will sometimes find it difficult to establish that his patent is broad enough to cover an accused product, yet narrow enough “to evade the strictures of a crowded art field.” Augustine Med., Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 1301 (Fed. Cir. 1999). As the district court correctly recognized, Old Reliable faced significant challenges in its effort to estab-lish that the ’950 patent was not anticipated by the VT-2 product, but was nonetheless infringed by the VT-1 prod-uct. See Invalidity Decision, 2009 U.S. Dist. LEXIS 25181, at *8-15.

**Corroboration issues arose:

See Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., No. 2009-1251, 2010 U.S. App. LEXIS 25967, at *32 (Fed. Cir. Dec. 22, 2010) (“Generally, corroboration is required of any witness whose testimony alone is asserted to invalidate a patent. This requirement stems from the suspect nature of oral testimony concerning invalidating events.” (citations and internal quotation marks omit-ted)). Thus, although the district court chose to credit Dauphinais’ testimony, Old Reliable had reasonable grounds for challenging that testimony and for contending that the Air-Flo was not anticipatory prior art.

**The CAFC did not seem to remark on the text:

Noting that “[a]nticipation is the epitome of obviousness,” the court determined that since the VT-2 and the Air-Flo products anticipated the ’950 patent, they also rendered the asserted claims obvious. Id. at *18 (citations and internal quotation marks omitted).

[Something can anticipate but not render obvious.]


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