Spectralytics, Inc. v. Cordis Corp., Nos. 2009-1564, 2010-1004 (Fed. Cir. June 13, 2011) (Judges Newman, Clevenger, and Bryson)
Another week, another case involving stents. (Last week’s case was Boston Scientific Corp. v. Johnson & Johnson. You can read our summary of that opinion here.) This case is about Spectralytics’s patent for manufacturing coronary stents. According to trial testimony, Norman Noble, one of Spectralytics’s competitors, observed Spectralytics’s much-improved stent design, and later built its own machine that used the same improvement. Norman Noble supplied the stents it produced to Cordis, which indemnified Norman Noble for any patent infringement. A jury found that Cordis had willfully infringed the patent and that the patent is not invalid. The jury awarded a 5% royalty in damages, but the judge denied Spectralytics’s request for enhanced damages and attorney fees.
Cordis appealed the invalidity and royalty determinations. The procedural posture mattered—because Cordis was appealing a denial of a motion for judgment as a matter of law, the Federal Circuit reviewed the jury’s verdict to determine if it was supported by substantial evidence. The court reviewed the art and concluded that a reasonable jury could have found substantial evidence that the patent was not obvious.
One interesting point: “‘Teaching away’ does not require that the prior art foresaw the specific invention that was later made, and warned against taking that path.” Slip op. at 11. The prior art might also teach away if all prior art examples improved performance by doing the opposite of the patented invention.
The other interesting aspect of this case is the trial judge’s denial of enhanced damages and attorney fees. The Federal Circuit found that he went too far in failing to look at whether there was a failure to investigate. While Seagate did change the standard for willful infringement, the court noted that the factors identified in Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992) are still important in determining whether enhanced damages should be awarded.
You can read the opinion here.
Cornish v. Kappos, No. 2010-1433 (Fed. Cir. June 13, 2011) (Judges Prost, Moore, and O’Malley) (per curiam) (nonprecedential)
Attorney sues PTO for reinstatement of patent bar registration and appeals interlocutory orders denying him temporary reinstatement. While appeal is pending, district court grants summary judgment to PTO on some claims and dismisses remaining claims against PTO. Federal Circuit dismisses appeal as moot.
You can read the opinion here.
Dalton v. Honda Motor Co., Ltd., No. 2011-1077 (Fed. Cir. June 13, 2011) (Judges Prost, Moore, and O’Malley) (per curiam) (nonprecedential)
The Federal Circuit put the brakes on Mr. Dalton’s pro se attempt to defend his registration of the mark DEALERDASHBOARD. Honda opposed the mark at the Trademark Trial and Appeal Board (TTAB) after receiving a cease and desist letter from Mr. Dalton. Mainly, this case illustrates the dangers of going pro se: Mr. Dalton didn’t argue that the mark had acquired distinctiveness, so he couldn’t overcome the TTAB’s finding that the mark was merely descriptive. Mr. Dalton also apparently waited until his deposition to produce a number of important documents, which Honda then moved successfully to exclude from the case.
The court affirmed the TTAB’s decision sustaining Honda’s opposition and refusing Mr. Dalton’s registration of the mark.
Read the opinion here.
Stamps.com, Inc. v. Endicia, Inc., No. 2010-1328 (Fed. Cir. June 15, 2011) (Judges Bryson, Dyk, and Prost) (nonprecedential)
The Federal Circuit gave its stamp of approval to the district court’s grant of summary judgment of invalidity with respect to 15 claims of eight patents asserted by Stamps.com. Stamps.com had originally asserted infringement of 629 claims of 11 patents, but the district court limited the number of asserted claims to 15 claims, and would allow more if Stamps.com showed there was good cause to allow it to assert more claims. After moving for summary judgment of no invalidity (and losing), Stamps.com then moved to pursue additional claims, and the district court entered judgment of invalidity on all of the existing claims in the case.
Stamps.com complained that it was an abuse of discretion to limit the case to 15 claims. The Federal Circuit disagreed, noting that it had made no attempt to show good cause why it should be able to add more claims to the case.
There are a couple of notable aspects of the court’s analysis of the prior art. First, there was a factual issue regarding whether an article by Tygar and Yee had been published before the critical date. Tygar submitted a declaration listing the article as prior art, and evidence that the article was available and indexed on a server at Carnegie Mellon, which was apparently accessible to the public. The majority agreed that this was sufficient to establish publication. Judge Bryson disagreed. He felt that Tygar’s declaration is conclusory and not evidence. He also saw no evidence that the Carnegie Mellon server was publicly accessible or “widely disseminated” in 1993. He concluded that Endicia had not met its burden to show that the Tygar and Yee article was published before the critical date.
This case also involved indefiniteness of a means-plus-function claim. The claim at issue included a “means for determining a value” of a transaction. The specification disclosed that the E-STAMP program could be used to perform the calculations. The court held that this was not sufficient to enable a person of ordinary skill in the art to implement the structure. The specification did not disclose any algorithm that could perform the function, so the claim was indefinite.
Contrast this with the result in Inventio, discussed below—because the claims there were held to not be means-plus-function, no algorithm was required.
You can read the opinion here.
Inventio AG v. Thyssen Krupp Elevator Americas Corp., No. 2010-1525 (Fed. Cir. June 15, 2011) (Judges Lourie, Prost, and Moore)
The question here is whether the terms “modernizing device” and “computing unit” invoke means-plus-function claiming. The district court held that even though the word “means” did not appear, the claims invoke means-plus-function claiming. And they are indefinite because the specification failed to disclose algorithms that perform the functions.
The Federal Circuit disagreed. It concluded that the description of the functions of the “modernizing device” and “computing unit,” when combined with block diagrams showing how those components were connected to the system, are sufficient structure to meet the definiteness requirement.
Author’s Note: This opinion provides an interesting contrast to the Stamps.com case. The Stamps.com patents have figures showing how the E-STAMP component was connected to the system and showing inputs and outputs, just like the patent at issue in Inventio. In Inventio, the computing unit was described as running a particular “computer program product,” even though that program does not appear in the independent claims. Judge Prost was on both panels, and voted for the judgment in both cases. So what’s the reason for the different outcomes?
As far as I can tell, it seems to be the word “means.” The court presumes that a claim with the word “means” is a means-plus-function claim, and that a claim without that word isn’t. In these two cases, it seems to give these presumptions a lot of weight, perhaps for predictability, perhaps to give claims their intended meaning, or perhaps for some other reason. In many ways, the specifications give similar support to the claims.
This opinion is also notable for its response to a motion to strike parts of Inventio’s reply that was filed by Thyssen. The court denied the motion, but also characterized it as having a “nasty tone” and “border[ing] on the type of frivolous and wasteful litigation tactics that we have previously frowned upon.” Slip op. at 3. The author of the motion, David Schmit of Frost Brown & Todd, agreed to let me post the brief, so you can read it yourself. Personally, I am not a fan of the tone, if for no other reason than I haven’t found it to be persuasive to judges. But the court’s opinion seems to be an overreaction to me. If I had to guess, I would say that this is less about the motion itself and more about discouraging parties in the future from filing motions to strike substantive briefs without a truly compelling reason that is in line with the court rules.
You can read the Inventio opinion here.