Federal Circuit Update - September 14-17, 2004

Irdeto Access, Inc. v. Echostar Satellite Corporation, et al. (http://www.fedcir.gov/opinions/04-1154.doc)

Federal Circuit, September 14, 2004, before NEWMAN, MICHEL (opinion), and BRYSON, Circuit Judges.

Irdeto Access, Inc. (”Irdeto”) appeals the decision of the United States District Court for the District of Colorado granting summary judgment of noninfringement to Echostar Satellite Corporation, and Kudelski, S.A. and Nagravision, S.A. (collectively, “Echostar”).  Irdeto Access, Inc. v. Echostar Satellite Corp., Civil Action No. 98-M-1291 (D. Colo. Sept. 26, 2003) (”Summary Judgment Order”).  Because we find no error in the district court’s claim construction, we affirm the summary judgment of noninfringement.

~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~

Poly-America, L.P. v. GSE Lining Technology, Inc. (http://www.fedcir.gov/opinions/04-1022.doc)

Federal Circuit, September 14, 2004, before MICHEL, LOURIE (opinion), and RADER, Circuit Judges.

GSE Lining Technology, Inc. (”GSE”) appeals from the post-trial decision of the district court denying its motion for judgment as a matter of law (”JMOL”) that two of Poly-America, L.P.’s (”Poly-America’s”) patents relating to landfill liner technology were invalid.  Poly-America, L.P. v. GSE Lining Tech., Inc., No. 3:00-CV-1457-D (N.D. Tex. Aug. 13, 2003) (”Post-Trial Order”).  GSE also appeals from the denial of its motion for a new trial on damages.  Id.  Because we agree with the district court’s claim construction with respect to Poly-America’s patents and because there is sufficient evidence to support the jury’s verdict, we affirm the denial of JMOL of invalidity for both patents.  However, because the district court erred in permitting Poly-America to claim the lost profits of a related corporation, Poly-Flex, Inc. (”Poly-Flex”), in its damages calculations, we reverse the district court’s denial of GSE’s motion for a new trial on damages and remand for the district court to redetermine whether Poly-America has incurred lost profits.

Related Posts:

• TI Group Automotive Systems (North America), Inc. v. VDO North America, L.L.C., et al. (Fed. Cir.)
• Federal Circuit update II
• Superguide Corporation v. Directv Enterprises, Inc., et al. (Fed. Cir).

Federal Circuit Update (September 13, 2004)

The Toro Company v. White Consolidated Industries, Inc., et al.

Federal Circuit, September 13, 2004, before RADER, LINN (opinion), and DYK, Circuit Judges.

The Toro Company (“Toro”) appeals the decision of the United States District Court for the District of Minnesota granting summary judgment of non-infringement of United States Patent No. 4,694,528 (“the ’528 patent”) in favor of White Consolidated Industries, Inc., and WCI Outdoor Products, Inc. (collectively “White”).  Toro Co. v. White Consol. Indus., Inc., No. 4-95-656 (DWF/AJB) (D. Minn. May 14, 2003) (“Opinion”).  Because this court’s previous claim construction is law of the case, and because the district court correctly held that the disclosure of unclaimed subject matter in the ’528 patent triggers the disclosure-dedication rule, we affirm the district court’s judgment in favor of White.

~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~

International Rectifier Corporation v. IXYS Corporation

Federal Circuit, September 13, 2004, before LOURIE, Circuit Judge, PLAGER (opinion), Senior Circuit Judge, and PROST, Circuit Judge.

The issue in this case is whether the injunction granted the patentee is overly broad, and, if so, what is the proper remedy.  International Rectifier Corporation (“IR”) is the assignee of U.S. Patent No. 6,476,481 (“the ’481 patent”), which relates to semiconductor device “packages.”  On the day the patent issued, IR filed a patent infringement suit against IXYS Corporation (“IXYS”) in the United States District Court for the Central District of California.  Within two weeks IXYS modified the design of its accused semiconductor products.  When IR filed a motion for summary judgment of infringement, IXYS did not oppose the motion on the merits because IXYS admitted that its original product design infringed.  IXYS did, however, oppose the form of the judgment and the permanent injunction proposed by IR.  The trial court granted IR’s motion for summary judgment, entered final judgment, and granted a permanent injunction against IXYS with the exact language proposed by IR.

IXYS appeals the trial court’s order of judgment and permanent injunction.  Because the injunction does not satisfy the requirements of Rule 65(d) of the Federal Rules of Civil Procedure and our controlling case law, we vacate the injunction and remand for the district court to issue an injunction of proper scope.  Since IXYS had withdrawn its affirmative defenses relating to the validity and enforceability of the patent before judgment was entered, we also vacate the portion of the judgment and injunction regarding those issues.  We find no basis for disturbing the district court’s decision to transfer the case from one judge to another under the court’s local rules regarding related cases, and that part of the court’s decision is affirmed.

Related Posts:

• International Rectifier Corp. v. Samsung Electronics, Ltd., et al. (Fed. Cir.)
• International Rectifier Corp. v. Ixys Corp. (Fed. Cir.)
• Federal Circuit update II

Federal Circuit update II

Lighting World, Inc. v. Birchwood Lighting, Inc.
Federal Circuit, September 3, 2004, before BRYSON (opinion), Circuit Judge, PLAGER, Senior Circuit Judge, and LINN, Circuit Judge.

The district court entered judgment for the defendant in this patent case following the plaintiff’s case-in-chief at trial. Lighting World, Inc. v. Birchwood Lighting, Inc., No. CV 01-09329 PA (C.D. Cal. June 11, 2003). Plaintiff Lighting World, Inc., appeals from the judgment against it and contends that the district court should have entered summary judgment in its favor. Defendant Birchwood Lighting, Inc., has filed a cross-appeal raising several issues. With respect to Lighting World’s appeal, we affirm the judgment in part and vacate it in part, but we deny Lighting World’s request that we direct the district court to grant its motion for summary judgment of infringement. With respect to Birchwood’s cross-appeal, we affirm the judgment as to one issue and dismiss the cross-appeal as to the other issues raised by Birchwood.

Juicy Whip, Inc. v. Orange Bang, Inc., et al.
Federal Circuit, September 3, 2004, before NEWMAN, LOURIE (opinion), and LINN, Circuit Judges.

This is the latest appeal in the lengthy litigation between Juicy Whip, Inc. (“Juicy Whip”), the patentee of a beverage dispenser, and the defendants (collectively, “Orange Bang”), accused infringers. Following our previous decision reversing a judgment of invalidity and unenforceability of Juicy Whip’s patent by the United States District Court for the Central District of California, Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728 (Fed. Cir. 2002), a jury awarded Juicy Whip compensatory damages totaling $643,379.75. Juicy Whip now appeals from the court’s decision denying its claim for lost profits, Juicy Whip, Inc. v. Orange Bang, Inc., No. CV 96-08148 ABC (RNBx) (C.D. Cal. Dec. 16, 2002) (“Lost Profits Order”). Juicy Whip also appeals from the decision of the district court denying its motion for enhanced damages and attorney fees, Juicy Whip, Inc. v. Orange Bang, Inc., No. CV 96-08148 ABC (RNBx) (C.D. Cal. July 30, 2003) (“Final Judgment”), and requests reassignment of the case to a new judge. For the reasons set forth below, we vacate the decision denying lost profits and remand for further proceedings; affirm the decision denying enhanced damages and attorney fees; and decline to reassign the case to a different judge.

Monsanto Company v. Kem L. Ralph
Federal Circuit, September 7, 2004, before LOURIE (opinion), GAJARSA, and PROST, Circuit Judges.

Kem L. Ralph appeals from two final judgments of the United States District Court for the Eastern District of Missouri: (1) a July 12, 2002, judgment on orders of October 10, 2001, striking Ralph’s pleadings under Fed. R. Civ. P. 37(b), and February 15, 2002, imposing monetary sanctions for discovery abuses, intentional violation of court orders, and repeated attempts to conceal his misconduct, Monsanto Co. v. Ralph, No. 4:00CV135 RWS (E.D. Mo. July 12, 2002); and (2) a July 9, 2003, judgment entering a jury award to Monsanto of nearly three million dollars in damages for patent infringement, or, in the alternative, breach of contract, and granting Monsanto’s motion for permanent injunction, Monsanto Co. v. Ralph, No. 4:00CV135 RWS (E.D. Mo. July 9, 2003) (“2003 Judgment”). Ralph also appeals from the September 3, 2003, order of the trial court denying Ralph’s post-judgment motion to set aside the jury’s award of damages for patent infringement. Monsanto Co. v. Ralph, No. 4:00CV135 RWS (E.D. Mo. Sept. 3, 2003). Because we hold that the contract-based damages are excessive in light of our recent decision in Monsanto Co. v. McFarling, 363 F.3d 1336 (Fed. Cir. 2004) (“McFarling”), but that the trial court did not abuse its discretion in its choice of sanction or its denial of Ralph’s post-judgment motion, and that Ralph has not shown that the larger jury award for patent infringement is unlawful, clearly not supported by the evidence, or based only on speculation or guesswork, we vacate-in-part and affirm-in-part.

Related Posts:

• Federal Circuit Update - September 14-17, 2004
• Federal Circuit Update (September 13, 2004)
• Metabolite Laboraories, Inc., et al. v. Laboratory Corporation of America Holdings (DBA LabCorp) (Fed. Cir.)

Federal Circuit Update

Catching up on some recent Fed. Cir. cases….

Home Diagnostics, Inc. v. Lifescan
Federal Circuit, August 31, 2004, before RADER (opinion), DYK, and PROST, Circuit Judges.

The United States District Court for the Northern District of California held that Home Diagnostics, Inc.’s (HDI’s) Prestige blood glucose meters do not infringe LifeScan, Inc.’s (LifeScan’s) patent on the use of reflectance to measure analyte concentration in a colored biological fluid. Home Diagnostics, Inc. v. LifeScan, Inc., No. 5:01-cv-20725-JW (N.D. Cal. Oct. 2, 2002) (Claim Construc-tion Order); Diagnostics, Inc. v. LifeScan, Inc., No. C 01-20725 JW (PVT) (ADR) (N.D. Cal. Apr. 14, 2003) (Order Entering Judgment). Because the district court did not give the claim language its full scope and customary meaning, this court reverses the district court’s claim construction order, vacates the order entering judgment, and remands for determination of validity and infringement.

Cardiac Pacemakers, Inc. et al. v. St. Jude Medical, Inc. et al.
Federal Circuit, August 31, 2004, before NEWMAN (opinion), Circuit Judge, FRIEDMAN, Senior Circuit Judge, and RADER, Circuit Judge.

This patent infringement action was brought by Cardiac Pacemakers, Inc., Guidant Sales Corp., Eli Lilly and Company, and Anna Mirowski (collectively “CPI”) against St. Jude Medical, Inc., Pacesetter, Inc., and Ventritex, Inc. (collectively “St. Jude”), in the United States District Court for the Southern District of Indiana. The appeal relates to United States Patent No. 4,407,288, entitled “Implantable Heart Stimulator and Stimulation Method,” inventors Alois A. Langer, Steve A. Kolenik, Marlin S. Heilman, Mieczyslaw Mirowski, and Morton M. Mower. We affirm in part and modify in part the district court’s claim construction, reinstate the jury verdict of validity, and remand for a new trial of infringement and reassessment of damages. We affirm the district court’s decision upholding the patent term extension.

The Chamberlain Group, Inc., v. Skylink Technologies, Inc.
Federal Circuit, August 31, 2004, before GAJARSA (opinion), LINN, and PROST, Circuit Judges.

The Chamberlain Group, Inc. (“Chamberlain”) appeals the November 13, 2003 summary judgment of the United States District Court for the Northern District of Illinois (“District Court”) in favor of Skylink Technologies, Inc. (“Skylink”), finding that Skylink is not violating the anti-trafficking provisions of the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 1201 et seq., and dismissing all other claims, including claims of patent infringement. Chamberlain Group, Inc. v. Skylink Techs., Inc., 292 F. Supp. 2d 1040 (N.D. Ill. 2003) (“Chamberlain II”). That same court, in an earlier ruling, denied Chamberlain’s motion for summary judgment on its DMCA claims. Chamberlain Group, Inc. v. Skylink Techs., Inc., 292 F. Supp. 2d 1023 (N.D. Ill 2003) (“Chamberlain I”). Chamberlain does not appeal that denial of its summary judgment motion.
Chamberlain’s claims at issue stem from its allegation that the District Court incorrectly construed the DMCA as placing a burden upon Chamberlain to prove that the circumvention of its technological measures enabled unauthorized access to its copyrighted software. But Skylink’s accused device enables only uses that copyright law explicitly authorizes, and is therefore presumptively legal. Chamberlain has neither proved nor alleged a connection between Skylink’s accused circumvention device and the protections that the copyright laws afford Chamberlain capable of overcoming that presumption. Chamberlain’s failure to meet this burden alone compels a legal ruling in Skylink’s favor. We therefore affirm the District Court’s summary judgment in favor of Skylink.

Xechem International, Inc. v. The University of Texas M.D. Anderson Cancer Center, et al.
Federal Circuit, August 31, 2004, before NEWMAN (opinion and “additional views”), GAJARSA, and LINN, Circuit Judges.

“Xechem International, Inc., a biopharmaceutical company, brought suit against the University of Texas M.D. Anderson Cancer Center and the Board of Regents of the University of Texas System (collectively “the University”) in the United States District Court, raising several federal and state counts arising from a collaborative project between Xechem and the University. In response to the complaint the University asserted its Eleventh Amendment and state immunity from suit, and the United States District Court for the Southern District of Texas granted the University’s motion to dismiss on the pleadings, Fed. R. Civ. P. 12(b)(6). The only issue on appeal is whether the University is subject to suit in federal court to obtain correction of the inventorship of United States Patents No. 5,877,205 and 6,107,333, the patents flowing from the project.
We affirm the dismissal, for Supreme Court precedent controls the arguments raised by Xechem with respect to waiver or abrogation of the University’s Eleventh Amendment immunity.

Related Posts:

• Nystrom v. Trex Company, Inc. et al. (Fed. Cir.)
• Goldenberg, et al. v. Cytogen, Inc., et al. (Fed. Cir.)
• Mars, Inc. v. H.J. Heinz Company, L.P., et al. (Fed. Cir.)