Friday, September 23, 2011

Cordance v. Amazon: No evidence for priority claim

The CAFC noted as to a disputed priority claim:

Cordance failed to prove that the ’710 Patent was entitled to claim priority to the 1993 conception document. To establish an earlier effective date, Cordance was required to prove prior conception. Conception “must be proven by evidence showing what the inventor has disclosed to others and what that disclosure means to one of ordinary skill in the art.” In re Jolley, 308 F.3d 1317, 1321 (Fed. Cir. 2002). Because of “a concern that inventors testifying in patent infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent or defeating another’s patent” conception must be proven by corroborating evidence. Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994). Although Cordance attempts to characterize the district court’s error as relating to corroboration, the district court expressly found no corroboration problem. Instead, the district court found that Cordance failed to link any disclosure contained within the 1993 conception document to any limitations in the asserted claims of the ’710 Patent as construed by the district court.


Cordance’s attempt to claim priority to the filing date of the ’205 Patent fails for a similar reason. Under 35 U.S.C. § 120, “a claim in a later application receives the benefit of the filing date of an earlier application so long as the disclosure in the earlier application meets the requirements of 35 U.S.C. § 112, ¶ 1, including the written description requirement, with respect to that claim.” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326 (Fed. Cir. 2008). Here, the ’710 Patent issued from the ’325 Patent, a continuation-in-part of the ’205 Patent. Thus, in order for the asserted claims of the ’710 Patent to receive the benefit of the filing date of the ’205 Patent, filed in February 1996, written description support for the asserted claims must be found in the ’205 Patent. Cordance failed to link any disclosure contained within the ’205 Patent to any limitation in the asserted claims of the ’710 Patent as construed by the district court. Furthermore, a review of the ’205 Patent specification shows that it does not support the claimed “automatically completing the purchase of the item . . . by processing said metadata” limitation. The district court did not err in granting Amazon’s JMOL that the effective date of the ’710 Patent is September 27, 1996.

On anticipation:

This court agrees with Amazon and concludes that claims 1, 3, 5, 7, and 8 of the ’710 Patent are anticipated by Amazon’s 1995 System as a matter of law.


Finally, contrary to Cordance’s allegations, Amazon’s theory of invalidity was not akin to the “practicing the prior art” theory rejected by this court in Tate Access Floors, Inc. v. Interface Architectural Resources, Inc., 279 F.3d 1357 (Fed. Cir. 2002). A “practicing the prior art” defense typically refers to the situation where an accused infringer compares the accused infringing behavior to the prior art in an attempt to prove that its conduct is either noninfringing or the patent is invalid as anticipated because the accused conduct is simply “practicing the prior art.” In Tate, this court explained that accused infringers “are not free to flout the requirement of proving invalidity by clear and convincing evidence by asserting a ‘practicing the prior art’ defense to literal infringement under the less stringent preponderance of evidence standard.” Id. at 1367. Instead “[a]nticipation requires a showing that each element of the claim at issue, properly construed, is found in a single prior art reference. ‘It is the presence of the prior art and its relationship to the claim language that matters for invalidity.’” Zenith Electrs. Corp. v. PDI Commc’n Sys., Inc., 522 F.3d 1348, 1363 (Fed. Cir. 2008) (quoting Tate, 279 F.3d at 1367). Here, as explained above, Amazon’s experts explained how each of the claim elements is disclosed by Amazon’s 1995 System. Amazon adequately satisfied its burden to show by clear and convincing evidence that each limita- tion of claims 1, 3, 5, 7, and 8 was found in its 1995 Sys- tem and thus, these claims are invalid as anticipated.

Of procedural matters:

Although it is unclear why the district court did not grant Cordance’s Rule 50(b) motion on § 102(f) as to claims 2 and 9, the district court’s action is consistent with the fact that Cordance never filed a Rule 50(a) motion challenging the sufficiency of the evidence as to Amazon’s derivation defense. Unitherm Food Sys., Inc. v. Swift-Eckrich, Inc., 546 U.S. 394, 398 n.1 (2006) (“A post-trial motion for judgment can be granted only on grounds advanced in the pre-verdict motion.” (citation omitted)).

Of jury verdicts:

When reviewing a general jury verdict, different rules apply depending upon whether the flaw is in the legal theory or the evidence. In Griffin v. United States, 502 U.S. 46 (1991), the Supreme Court explained, in the context of a criminal case, that “[j]urors are not generally equipped to determine whether a particular theory of conviction submitted to them is contrary to law.” Id. at 59. “When, therefore, jurors have been left the option of relying upon a legally inadequate theory, there is no reason to think that their own intelligence and expertise will save them from that error.” Id. A “legal error,” which requires overturning a general verdict, “means a mistake about the law, as opposed to a mistake concerning the weight or the factual import of the evidence.” Id. “Quite the opposite is true, however, when they have been left the option of relying upon a factually inadequate theory, since jurors are well equipped to analyze the evidence.” Id.. In that situation, a court should not negate a verdict “merely on the chance . . . that the jury convicted on a ground that was not supported by adequate evidence when there existed alternative grounds for which the evidence was sufficient.” Id. at 59-60 (quoting United States v. Townsend, 924 F.2d 1385, 1414 (7th Cir. 1991)).


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