Thursday, April 10, 2014

Mixed result in 2-1 decision in University of Pittsburgh v. Varian

University of Pittsburgh v. Varian

Varian did win on willfulness:

Next, Varian contends that its non-infringement and invalidity defenses were reasonable and that the trial court erred in finding that Varian acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. Varian thus requests that we reverse the trial court’s willfulness holding. We agree with Varian that the court erred in its assessment of the objective prong of its willfulness determination because Varian’s validity defense under 35 U.S.C. § 103 was not objectively baseless.

Varian won on claim 22:

Varian further contends that the damages award based on claim 22 should be vacated because the district court improperly construed that claim to include beam generators when sold in combination with the RPM System. According to Varian, when claim 22 is properly construed, Pitt is not entitled to damages based on the sales of the linear accelerators, but only the separate RPM System. We again agree with Varian.

Seagate is cited on willfulness:

Establishing that a defendant has willfully infringed a valid patent is a two-step inquiry. First, “a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc). After the “threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk . . . was either known or so obvi- ous that it should have been known to the accused in-fringer.” Id. The threshold objective prong “is a question of law based on underlying questions of law and fact and is subject to de novo review.” Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003, 1005 (Fed. Cir. 2012).

Note footnore 3:

While not of substantial weight, it is at least worth noting that the PTO initially rejected the claims of the ’554 patent in light of Peltola during reexamination. While the PTO ultimately found that Peltola did not invalidate the asserted claims of the ’554 patent, the PTO’s actions during reexamination lend some credibility to Varian’s argument that its invalidity defense based on Peltola was not objectively unreasonable when the PTO went so far as to issue an initial rejection of the claims.

Note also:

SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disa- greement with the district court . . . do not amount to a developed argument.”).

Judge Dyk dissented

I agree with the majority’s decision to reverse the will- fulness finding. However, I respectfully dissent from the majority’s decision to affirm the construction of claim 20. In my view, the majority’s construction is plainly incor- rect, and the resulting infringement findings as to claim 20 as well as claims 22 and 38, which depend from and recite the same apparatus as claim 20, should be set aside.


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