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Fish Federal Circuit Summary Service: Issue # 295

March 8, 2007

Newsletters

Fish Federal Circuit Summary Service: Issue # 295

March 8, 2007

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Appellant Asserting Prejudice Cannot Assert The Work Product Doctrine To Refuse to Explain the Prejudice
Walter Kidde Portable Equip., Inc. v. Universal Security Instruments, Inc.
Date: Mar. 2, 2007
Panel: Gajarsa, Moore, Jordan
Author: Jordan
District court: M.D.N.C.
Trial judge: Tilley
Summary: Fed Cir affirms the dismissal without prejudice of Kidde’s claims and the dismissal of Universal’s counterclaims without prejudice. Kidde moved for voluntary dismissal of its pending suit to cure a standing problem, and then immediately refile a new lawsuit against Universal. Addressing first its jurisdiction over the appeal, the Fed Cir ruled that, because the district court dismissed the “action” rather than just Kidd’s complaint, Universal’s counterclaims were also dismissed and made the ruling appealable.

Dismissal of Kidde’s claims: Turning to the merits, the Fed Cir applied regional circuit law and held that the district court did not abuse its discretion by granting Kidde’s FRCP 41 voluntary dismissal without prejudice over Universal’s objections, because (i) Universal will not be severely prejudiced since it can reuse in the new case the discovery, work product, and trial preparation it had from the dismissed case, (ii) while the dismissal rendered moot the in limine rulings excluding Kidde’s belated expert reports, the prejudice is not substantial since the district court could have changed its scheduling order at any time and Universal is free to argue that these rulings should apply in the new case, and (iii) Universal failed to establish prejudice when it failed to offer any evidence of such prejudice.

Dismissal of Universal’s counterclaims: The Fed Cir ruled that the district court erred in dismissing the counterclaims but that the error was harmless, because (i) Universal is free to assert all of its counterclaim in the new case, (ii) Universal’s assertion of work product in refusing to identify any impaired substantial rights is unsupported by case law and fails to meet the requirement that “[a] party must articulate how its rights are affected so that we can determine whether they are indeed rights, whether they are substantial, and whether they have been affected,” slip op. at 19, and (iii) the mooted in limine rulings do not constitute affected substantial rights because these rulings “did not grant USI a right that was later taken away; the court simply rendered a decision designed to maintain the trial schedule that was then in place.” Id.

Failure to address standing before dismissal: Applying regional circuit law, the Fed Cir ruled that the district court erred in dismissing the claims and counterclaims without first addressing the issue of subject matter jurisdiction based on lack of standing. The error was, however, harmless because allowing the district court to address this issue on remand would place the parties in the same position anyways.

KEY WORDS: VOLUNTARY DISMISSAL, RULE 41, INVOLUNTARY DISMISSAL OF COUNTERCLAIMS, STANDING, SUBJECT MATTER JURISDICTION, HARMLESS ERROR

Stay of District Court Proceedings Parallel To An ITC Investigation Must Remain In Place Until The ITC Ruling Can No Longer Be Appealed
In re Princo Corp.
Date: Mar. 1, 2007
Panel: Bryson, Linn, Dyk
Author: Dyk
District court: S.D.N.Y.
Trial judge: Brieant
Summary: Fed Cir grants writ of mandamus dismissing summary judgment and ordering stay of case pending resolution of appeal in the parallel proceeding in the International Trade Commission (ITC). Princo had moved under 28 USC 1659 to stay the district court proceeding in light of the parallel ITC investigation. After the ITC issued a final determination of patent misuse against Phillips (the patentee) but before Phillips appealed, the district court lifted the 1659 stay over Princo’s objections and granted summary judgment in Phillips’s favor on Princo’s misuse defense. Different panels of the Fed Cir found errors in the ITC and the district court’s rulings and remanded them. On remand, the district court denied Princo’s motion to stay and again granted summary judgment for Phillips. In response to the petition for a writ of mandamus, the Fed Cir first noted that it had jurisdiction over the petition and that it would address them under its own law, “except to the extent that underlying substantive issues may be governed by regional circuit law.” Slip op. at 8. The Fed Cir further ruled that it may entertain petitions for mandamus regardless of whether the petitions involve substantive patent law or procedural issues. On the merits of the petition, the Fed Cir interpreted the phrase “until the determination of the Commission becomes final” in section 1659 “to mean that the determination is final when it can no longer be appealed.” Id. at 12. The court of appeals rejected Phillips’s alternative ground for denying mandamus, because (i) the statute provides for a stay of the entire district court proceedings rather than a litigation stay of issues common to the ITC investigation, (ii) since the statute does not require a motion to stay within 30 days after the lawsuit started, Princo timely moved to stay within 30 days after it intervened in the case years after the case had started, and (iii) Princo did not waive its right to seek the petition by filing a motion for summary judgment in the district court.

KEY WORDS: WRIT, MANDAMUS (YES), INTERNATIONAL TRADE COMMISSION, STAY, APPELLATE JURISDICTION (YES)

Testimony of Lay CEO About Patentee’s Commercial Product Does Not Satisfy “Particularized Testimony And Linking Argument” Requirement for Infringement Under the Doctrine of Equivalents
Aquatex Indus., Inc. v. Techniche Solutions
Date: Feb. 27, 2007
Panel: Rader, Dyk, Whyte (sitting by designation)
Author: Dyk
District court: M.D. Tenn.
Trial judge: Echols
Summary: Fed Cir affirms summary judgment of noninfringement regarding the doctrine of equivalents. In a previous appeal in this case, the Fed Cir held that the asserted claims related to a method for cooling a person by using a multi-layered, liquid-retaining composite material in evaporative cooling garments were not literally infringed. In this appeal, the Fed Cir held that the district court erred in applying prosecution history estoppel because “the amendment was directed to a completely different claim limitation,” slip op. at 8, and erred in its reliance on an unclaimed limitation derived from the specification and the patentee’s commercial product. Applying the de novo standard, the Fed Cir, however, ruled that the patentee failed to offer “particularized testimony and linking argument on a limitation-by-limitation basis that created a genuine issue of material facts as to equivalents.” Slip op. at 13. “[T]he evidence of equivalents must be from the perspective of someone skilled in the art, for example ‘through testimony of experts or others versed in the technology; by documents, including texts and treatises; and, of course, by the disclosures of the prior art.'” Id. Aquatex failed to meet its evidentiary burden, because the only evidence provided was the deposition testimony of its CEO to establish how the commercial product operated; the testimony “did not specifically address equivalents or compare [the defendant]’s product to the patented method on a limitation-by-limitation basis.” Id. at 14. Because the patentee “only provided lawyer argument and generalized testimony about the accused product,” it failed to demonstrate a genuine issue of material fact.

KEY WORDS: PROSECUTION HISTORY ESTOPPEL (NO), VITIATION (NO), DOCTRINE OF EQUIVALENTS (NO), PARTICULARIZED TESTIMONY, LINKING ARGUMENT, SUMMARY JUDGMENT

Prosecution Disclaimer Applies Unless it is Rescinded with Crystal Clarity; Claim Construction is Not Required if it Would Not be Material to Disposition of the Case
Hakim v. Cannon Advent Group, PLC
Date: Feb. 23, 2007
Panel: Michel, Newman, Rader
Author: Newman
District court: W.D.La.
Trial judge: James
Summary: Fed Cir affirms summary judgment of noninfringement for one patent and invalidity for anticipation of another. The patents cover spill-resistant drinking cups. For the first patent, the applicants had broadened the claims from reciting a “slit” in the cover to reciting an “opening”; the district court properly limited the claims to a slit, because the applicant, by telling the examiner only that he was broadening the claims, did not provide sufficient clarity to note that he was wiping out a distinction (i.e., slit) that he previously made when arguing over prior art in the parent case. On anticipation of the second patent, the Fed Cir first noted that the district court did not need to perform a claim construction because there was no indication that any particular construction would have changed the result. On the merits, the district court did not err in finding that the prior art disclosed a limitation that Hakim said it did not. Finally, there was no err in rejecting Hakim’s proffered expert declaration because Hakim had never identified himself as an expert and had not filed an expert report, and there was no need for expert testimony in any event. (The district court had placed the word “technology” in quotes when referring to the “technology” in this case — indicating that he saw “technology” to be less than descriptive of a sippy cup.)

Note: The Fed Cir unfortunately referred to “recapture” here, which may lead some to cite this case in the context of the well-known recapture doctrine for broadening during reissue. This case is very different.

KEY WORDS: CLAIM CONSTRUCTION (NARROW), PROSECUTION DISCLAIMER (YES), ANTICIPATION (YES), EXPERT TESTIMONY

Section 1498 Applies Where Contract Does Not Result in (Alleged) Infringement But Work Plan Prepared by contractor Does
Sevenson Environmental Servs., Inc. v. Shaw Environmental, Inc.
Date: Feb. 21, 2007
Panel: Linn, Dyk
Author: Linn
District court: W.D.N.Y.
Trial judge: Arcara
Summary: Fed Cir affirms summary judgment dismissing suit because the U.S. government was the proper defendant under 28 USC 1498. Shaw had a contract to perform environmental remediation, and the particular accused technique was proposed by Shaw in a work plan approved by the government, not in the contract itself. Section 1498 applies if the work is “for the government” and “with the authorization and consent of the government.” The Fed Cir first determined that “for the government” simply means pursuant to a government contract, and does not require that the “primary purpose” of the contract be the infringing activity, or that the government chose the infringing method. The work was “with the authorization and consent of the government” even though the contract did not require the infringing method, because the work plan (prepared by Shaw) that Shaw was required to follow did require (alleged) infringement. Thus, Shaw had immunity under 28 USC 1498. (The Fed Cir applied its own law to interpret the contract because it was a government contract and it dealt centrally with patents (or at least a small part of it did).)

KEY WORDS: 28 USC 1498, CHOICE OF LAW, CONTRACT INTERPRETATION

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