Fish & Richardson Wins en banc Patent Appeal in Federal Circuit

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The Court of Appeals for the Federal Circuit ruled in favor of Fish & Richardson’s client, R.E. Service Co., in an en banc decision in a patent infringement case. The decision sets out clear rules for writing patents and resolves a conflict between two earlier opinions of the Federal Circuit.

The Federal Circuit normally hears cases in panels of three judges, but sits en banc, or in a session where the entire thirteen judges participate in the decision, a few times each year.

The case involved a patent held by Johnson & Johnston Associates on a printed circuit board. A printed circuit board is a thin plate on which computer chips or other electronic components are placed. Printed circuit boards are used in everything from computers to telephones to medical equipment.

Johnson & Johnston’s patent claimed a printed circuit board with a substrate that was aluminum, but in the description of the invention the patent stated that the substrate could also be steel. R.E. Service made printed circuit boards using steel as its substrate. Johnson & Johnston sued R.E. Service for patent infringement and won under the doctrine of equivalents. The doctrine of equivalents allows inventors to have their patent rights extend beyond the strictly literal wording of their patent claims to cover “equivalent” devices that work in the same way to obtain the same result. The jury held that R.E. Service’s use of steel was the equivalent of aluminum, and so infringed the Johnson & Johnston patent.

R.E. Service added Fish & Richardson to its legal team for the appeal. The Court of Appeals for the Federal Circuit reversed the jury’s verdict, holding that if a patent owner fails to claim something described in the patent, then whatever has been described but not claimed has been dedicated to the public. Since Johnson & Johnston said that steel could be used in the substrate, but failed to claim steel as part of the invention, Johnson & Johnston’s patent did not cover printed circuit boards that used steel.

“This case establishes a clear rule for writing patents,” said Boston principal Frank Porcelli, who argued the appeal for the winning side. “You cannot sue someone for patent infringement for doing something that you have described but failed to claim as part of your invention.”

Assisting Frank Porcelli on the appeal was principal Bob Hillman from the Boston office, and principal Rick Anderson and associate John Dragseth from the Twin Cities office. Also representing R.E. Service on the appeal was Robinson & Wood of San Jose, California. Johnson & Johnston was represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.

Other recent appellate wins

Bose Corp. v. JBL, Inc.

In October 2002 the United States Supreme Court declined to hear a petition from JBL to block a patent award that was issued by a United States District Court judge in Massachusetts and affirmed by the Federal Circuit Court of Appeals. JBL paid more than $8 million to Fish & Richardson’s client Bose for infringing a patent that covers the widely acclaimed loudspeaker enclosure found in the Bose Acoustimass® loudspeaker systems and the Lifestyle® music systems.

The Fish & Richardson team for Bose was led by Boston principal Greg Madera and Silicon Valley principal Shelley Wessels. They were assisted by Boston office principals Charles Hieken, Jolynn Lussier, and Steven Katz. JBL was represented by Brinks Hofer Gilson & Lione in the Supreme Court.

Frink America v. Champion Road Machinery

In October 2002 the Court of Appeals for the Second Circuit affirmed a judgment as a matter of law won by Fish & Richardson for its client Champion Road Machinery in the United States District Court for the Northern District of New York. Frink America sued Champion for theft of trade secrets, copyright, trademark, and trade dress infringement, interference with contract, breach of contract, unfair competition, and conversion. Fish & Richardson obtained summary judgment for Champion on all counts except one, which was tried before a jury. The jury found in favor of the plaintiff, finding conversion, damages, and punitive damages, but the district judge threw out all three. The Second Circuit affirmed on an alternative ground argued in Fish & Richardson’s appeal briefs that Champion purchased the factory and used what it thought it had bought in total good faith.

The Fish & Richardson team for Champion was led by Boston principals Frank Porcelli and Larry Kolodney, who argued the case before the Court of Appeals. Boston principal Jack Skenyon handled the case in its early stages and provided assistance throughout the litigation. Harris Beach LLP represented Frink America.

Benetton v. First Team Sports

In June 2002 the Court of Appeals for the Federal Circuit ruled in favor of Fish & Richardson’s client Benetton Sportsystem USA, Inc., reversing the United States District Court for the District of New Jersey.

Benetton, which sells Rollerblade® brand in-line roller skates, sued First Team Sports, Inc. for infringement of a patent on a size-adjustable in-line skate for children. The invention involved a skate design that permitted a modern in-line skate to be lengthened so that it could accommodate children’s growing feet.

The district court granted summary judgment of noninfringement to First Team, on the ground that the soft inner “liner” of the patented skate required an inelastic portion at the toe end of the skate with an extendable portion behind it. The First Team product lacked these features; the entire front part of its skate liner was elastic. On appeal, the court analyzed the word “region,” which appeared in the key claim limitations. While the district court said that a “toe region” and an “extendable region” must be sharply distinguished parts of the skate liner, the Federal Circuit agreed with Benetton’s argument that the claimed “region[s]” did not require such sharp boundaries. The court remanded the case back to the district court.

Boston principal Frank Porcelli argued in the Federal Circuit on behalf of Benetton. Principal Bob Hillman of the Boston office briefed the appeal. Drinker, Biddle & Reath LLP represented First Team.

Omega Optical, Inc. v. Chroma Technology Corp., et al.

In April 2002 the Vermont Supreme Court affirmed a 1999 judgment in favor of Fish & Richardson’s client Chroma Technology Corp. (“Chroma”), a Brattleboro manufacturer of optical interference filters for fluorescence microscopy. A 1996 suit filed by Omega Optical, Inc. (“Omega”) alleged that Chroma and its founders misappropriated trade secrets, breached fiduciary duties, and committed unfair competition by leaving Omega in 1991 to form a competing optical interference business, despite the absence of any non-compete agreement. The decision of the Vermont Supreme Court is the first modern treatment in Vermont regarding the relationship between trade secrets law and employment-at-will doctrine.

In a 5-0 decision, the Vermont Supreme Court held that the law requires “something more than the mere employeremployee relationship to establish a duty of confidentiality.” The Court agreed with the Superior Court that, despite the hightech nature of the two companies’ businesses, “Omega had failed to take measures toward protecting the information, and the circumstances under which the employees acquired the information failed to indicate to them that the information was confidential. Therefore, the defendants owed no duty of confidentiality to Omega, and their use of valuable information in their new venture did not constitute misappropriation.”

The case is believed to be the largest trade secrets trial in the history of Vermont. Omega sought a permanent injunction and $20 million in damages. Boston principal Heidi Harvey was lead counsel for Chroma in the 22-day Superior Court trial and on appeal. She was assisted by Of counsel Blair Perry, principal Jolynn Lussier, and associate Mike Zeliger, all of the Boston office. Omega was represented at trial and on appeal by R. Mark Halligan, Esq., of Welsh & Katz, Ltd.