Search Team

Search by Last Name

Fish Federal Circuit Summary Service: Issue #312

February 7, 2008

Fish Federal Circuit Summary Service: Issue #312

February 7, 2008

Home » Resources » Articles

Expert Rebutting Summary Judgment of Non-Enablement Must Be Person of Skill In the Art; Objection to Venue Transfer Waivable
Sitrick v. DreamWorks, LLC
Click here to download the case
Date: February 1, 2008
Panel: Michel, Rader, Moore
Author: Moore
District Court: C.D.Cal.
Trial Judge: Wilson
Summary: Fed Cir affirms summary judgment of non-enablement and dismisses objection to transfer order from the Northern District of Illinois. The technology at issue involves the integration of audio signals or visual images into a pre-existing video game or movie.

Enablement: After construing the claims-in-suit as encompassing movies and video games, the district court invalidated the claims because the specification only enabled the use of the invention in video games, but not in movies. The Fed Cir agreed, noting that “[a] patentee who chooses broad claim language must make sure the broad claims are fully enabled.” Slip op. at 8-9. The Fed Cir determined that the defendants met their initial burden on summary judgment by showing a lack of enablement “by reference to the teachings of the specifications and the opinions of their two experts.” Id. at 10. The patentee failed to present a genuine issue of material facts in rebuttal, because its expert’s testimony was conclusory, “unsupported by any actual information,” and came from a person who “admitted to not being skilled in the art of movie making.” Id. at 11. The Fed Cir also sustained the district court’s summary judgment of non-enablement as to another asserted claim, because the construction required the use of voice synthesis which was absent from the specification and because the patentee failed to present any evidence to contradict the defendants’ non-enablement argument.

Transfer: Applying regional circuit law and noting that objections to venue are waivable in the Ninth Circuit, the Fed Cir ruled that the patentee waived its objection to the Illinois district court’s transfer order because the patentee litigated its case in California for more than three years and filed multiple amended complaints which acknowledged that venue was proper in California.


Dissenting Judge Argues That Mandamus Appropriate To Address Case Dispositive Issue
In re Roche Molecular Sys., Inc.
Date: February 1, 2008
Panel: Newman (dissent), Freidman, Mayer (PER CURIAM)
Author: Mayer
District Court: N.D.Cal.
Trial Judge: Patel
Summary: Fed Cir denies Roche’s petition for a writ of mandamus directing the district court to vacate its summary judgment order in favor of Stanford University on Roche’s defenses of licensing, assignment, and shop rights. Roche argued in its petition that Stanford lacked standing to assert the patent-in-suit, but the Fed Cir denied the petition because Roche may obtain the relief it seeks through a normal appeal.

In her dissent, Judge Newman presented the facts underlying the district court’s ruling, and argued that granting the petition would address an issue dispositive of the entire case and would therefore avoid the significant expense associated with an upcoming trial.


“A”/”An” Can Sometimes Means “Single”; Claim Term Limited To Preferred Embodiment; No Prejudice Where Patentee Told Jury That Defendant Did Not Obtain An Opinion of Counsel; No Error Where Invalidity Expert Was Precluded From Testifying About Effect of Infringement Argument on Invalidity
Tivo, Inc. v. EchoStar Communications Corp.
Click here to download the case
Date: January 31, 2008
Panel: Bryson, Plager, Keeley (sitting by designation)
Author: Bryson
District Court: E.D.Tex.
Trial Judge:Folsom
Summary: Fed Cir reverses judgment of infringement regarding hardware claims, affirms judgment of infringement regarding the software claims, and affirms the damages award. The patent-in-suit relates to “time-shift” television signals allowing the replay of a television program while recording continues.

“Hardware” claims: Echostar challenged three main issues related to the hardware claims. First, Echostar argued that the language in the first three claim limitations demonstrated that the invention must accept both digital and analog signals. The Fed Cir agreed with the district court’s construction of these limitations based on the claim language and specification, and sustained the jury’s infringement verdict on this issue.
Second, the Fed Cir held that a fourth limitation requiring separation of video and audio components narrowed the claims to a disclosed embodiment, because (i) Tivo’s position is inconsistent with the specification and the patent’s figures, (ii) claim differentiation does not support Tivo’s arguments, and (iii) because “the specification clearly refers to the separation aspect of the ‘invention’ and not merely one embodiment of a broader invention. As this court recently held, ‘[w]hen a patent thus describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.’” Slip op. at 14 (bracket in original). Some, but not all, accused hardware did not meet this fourth limitation.
Third, the Fed Cir ruled that the remaining accused hardware practicing the fourth limitation did not meet the seventh limitation which required assembly of the “video and audio components into an MPEG stream.” While acknowledging the general rule that the words “a” or “an” in a patent claim carry the meaning of “one or more” when combined with the open-ended antecedent “comprising,” the Fed Cir ruled that “the question whether ‘a’ or ‘an’ is treated as singular or plural depends heavily on the context of its use. The general rule does not apply when the context clearly evidences that the usage is limited to the singular.” Slip op. at 20. Here, the claims and written description did not encompass both the singular and plural, but only a single MPEG stream. Because all of the accused hardware devices do not satisfy one or more asserted claims, the Fed Cir reversed the judgment of literal infringement related to the hardware claims.
The Fed Cir declined to affirm the infringement judgment based on the doctrine of equivalents because (i) the jury had not addressed equivalents since it was instructed not to proceed if it found literal infringement, (ii) the Fed Cir adopted more restrictive constructions than the ones used at trial, and (iii) the parties have not fully briefed the issue.

“Software” claims: Regarding the claim construction issue, the Fed Cir agreed that the claim term “object” referred to “a collection of data or operations” instead of object-oriented software, because (i) the claims and the specification do not require or imply that the invention must use object-oriented programming, and (ii) the district court’s construction did not solely rely on a dictionary definition, but instead focused on the understanding of the skilled artisan. The Fed Cir further held that substantial evidence supported the jury’s infringement verdict, focusing on the role of software in controlling hardware and in performing the claimed operations.

Willfulness: According to Echostar, Tivo’s counsel improperly told the jury that Echostar failed to obtain a written opinion of counsel because “any independent lawyer would have said that the Echostar devices infringed.” While Echostar did not seek a formal opinion from one firm, it had obtained two noninfringement opinions from an outside firm after Tivo filed suit. The Fed Cir declined to grant a new trial on this basis, because (i) in context, Tivo’s statements focused on the first law firm only, (ii) the trial judge was in a better position to determine the accuracy and impact of Tivo’s statement, and he had declined to grant a new trial, and (iii) the trial court had told the jury that lawyer’s statements are not evidence.

Evidentiary ruling: The district court prohibited Echostar’s expert from explaining how the infringement analysis of Tivo’s expert would result in invalidity. The Fed Cir sustained the district court because the ruling allowed Echostar’s expert to compare the claims to the prior art while avoiding possible jury confusion.


The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.