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Fish Federal Circuit Summary Service: Issue #322

February 20, 2009

Fish Federal Circuit Summary Service: Issue #322

February 20, 2009

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Substantial Evidence Supported Jury Verdict of Obviousness in Predictable Field, But Not Jury Verdict of Inequitable Conduct

Line Rothman v. Target Corp.
Click here to download the case
Date: Feb. 13, 2009
Panel: RADER, Friedman, Bryson
Author: Rader
District court: D.N.J.
Trial judge: Brown
Summary: Fed Cir affirms judgment (jury trial) of invalidity and noninfiringment, but reverses judgment of inequitable conduct. The patent covers a shirt with an integrated nursing bra-having fold-down flaps that can snap, and an elastic chest band for support. Ms. Rothman’s original prototype was a sewn-together combination of a Jockey tank top and an Olga nursing bra. Although the jury found invalidity on multiple bases, the Fed Cir addressed only obviousness, noting that evidence can be more easily found in such a predictable area, and pointing to various expert and documentary evidence to support the jury verdict. The Fed Cir found little relevance in appellee’s expert’s admission that he had not thought of the invention, and it determined that a review of Rothman’s evidence of objective indicia of nonobviousness was “uniquely within the province of the jury,” which had been clearly and properly instructed on the point. For inequitable conduct, the Fed Cir applied a substantial evidence standard because the parties sent the issue to the jury (which is “not the preferred course” according to the Fed Cir). The Fed Cir found no evidence of materiality for a prior art sports bra that a potential licensee had given Rothman’s attorney during prosecution, because it was cumulative with many sports bras that were before the examiner, and the attorney had a reasonable basis to think that another shirt he had been given was not prior art:

Receipt of threatening letters containing vague descriptions of unsubstantiated prior art at the tail end of a souring business relationship does not create an automatic duty of disclosure. Otherwise, every potential patent licensee (and prospective infringer) could subject a patent applicant to the possibility of inequitable conduct sanctions on a whim…[S]eemingly overnight, [the potential licensee] morphed from interested suitor offering favorable royalty terms and expressing assurance of “strong initial business” with a major retailer to a patent-eviscerating prior art holder. This course of conduct suggests, as Mr. Jacobson [the prosecuting attorney] concluded, that [the potential licensee] acted in bad faith.Also, the attorney had disclosed to the PTO letters from the potential licensee, albeit without identifying the particular shirts as prior art-and no sane person would do so if their intent was to hide the shirts from the world. Finally, statements the attorney made during prosecution were “legitimate attorney argument.”

Note1: If you are dealing with a jury verdict of obviousness on appeal (particularly in a predictable art), you probably want to read this opinion, as it contains a number of nuggets.

Note2: If you follow the court, you know that Judge Rader is not really happy with the current state of the law on deceptive intent. Although he reverses the finding of deceptive intent here, he plays it pretty close to the line (and the facts), and does not make any broad legal pronouncements.


Court Narrows Opportunity For Patentees to “Super Sack” Defendants post-Medimmune

Revolution Eyewear, Inc. v. Aspex Eyewear, Inc.
Click here to download the case
Date: Feb. 13, 2009
Panel: NEWMAN, Schall, Moore
Author: Newman
District court: C.D. Cal.
Trial judge: Guitierrez
Summary: Fed Cir reverses dismissal of counterclaims after holding that patentee’s covenant not to sue for past infringement did not oust the courts of jurisdiction. In Super Sack, the Fed Cir had held that a patentee could kill a case by giving up claims for past infringement, and agreeing not to sue for a product the defendant was currently making. This case was distinguishable because Revolution only provided a covenant for past infringement, and not for continued infringement (as was the case in Super Sack and other cases). Under Medimmune, there was a sufficient dispute because the parties had shown their adversity by the lengthy litigation leading up to the covenant, and Aspex was ready, willing, and able to put its product back on the market. (See SanDisk (statement that patentee did not intend to sue was insufficient to cancel out prior activities patentee had taken with respect to the accused infringer); cf. Benetic (no DJ jurisdiction where accused party’s conduct was protected by the Hatch-Waxman Act)).


Court Refuses To Allow a False Advertising Claim Over False Assertions of Inventorship

Baden Sports, Inc, v, Molten USA, Inc.
Click here to download the case
Date: Feb. 13, 2009
Panel: LOURIE, Rader, Linn
Author: Lourie
District court: W.D. Wash.
Trial judge: Pechman
Summary: Fed Cir reverses judgment (jury trial) of false advertising (an $8 million verdict) for Molten’s reference to its cushioned basketball as being “innovative,” when it in fact infringed Baden’s utility patent. The Fed Cir determined that the Supreme Court decision in Dastar, which prevents Lanham Act claims over advertisements that assert false authorship, was equally applicable to advertisements asserting false inventorship – or in the language of Section 43(a), such claims do not relate to the “origin of goods” or the “nature, characteristics, [or] qualities” of the goods, which both relate to the tangible goods, and not to the intangible ideas behind the goods. Baden waived separate arguments by not pursuing them at trial, including assertions that Molten switched to a different design while still promoting the original design, and Molten falsely claimed that its ball was developed by a prominent Italian designer. Finally, the Fed Cir refused Baden’s request to enjoin certain balls that do not infringe Baden’s patent–where the request for the injunction was a theory that consumers will think the balls contain the patented technology–because Baden had sought the injunction at the trial level under patent law, and not trademark law.

Note: The Fed Cir applied 9th Cir law, and explicitly indicated that the 1st Cir might permit this sort of claim under Dastar.


Simple Invention Obvious As a Matter of Law; No Infringement of Claims That Require Particular Configuration Simply Because Accused Structure is Reasonably Capable of Such a Configuration

Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc.
Click here to download the case
Date: Feb. 9, 2009
Panel: LOURIE, Clevenger, Linn
Author: Lourie
District court: N.D. Ill.
Trial judge: Der-Yeghiayan
Summary: Fed Cir reverses summary judgment of willful infringement and validity, for patent on a candle tin having a removable cover on which the candle tin can be placed when the candle is burning (to protect a surface from heat), and where the bottom of the tin has protrusions or legs “to seat” the tin on the cover. The Fed Cir first determined that “to seat” did not require the protrusions to fit into any recesses in the cover–i.e., the applicants had actually distinguished over prior art that locked a tin to a cover, and one embodiment in the patent plainly did not involve such engagement. On obviousness, one reference showed putting feet on the bottom of a candle holder and another showed putting the holder’s cover under the holder-both directed to removing the heat of the candle from the surface on which the candle rests. The combination would have provided additional insulation, and thus have at least been obvious to try. The district court erred by requiring an explicit motivation to combine, and indications of commercial success were “minimal.” Finally, the finding of direct infringement was wrong because the claims required the tin to sit on the cover (and did not recite mere capability of such an arrangement), and Limited made and sold its candles with the cover on top.


Majority Limits Claim Term Based On Embodiments in Specification

Kinetic Concepts, Inc. v. Blue Sky Med. Group, Inc.
Click here to download the case
Date: Feb. 2, 2009
Panel: Bryson, Dyk (dissent), PROST
Author: Prost
District court: W.D. Tex.
Trial judge: Furgeson
Summary: Fed Cir affirms judgment (jury trial) of non-obviousness and non-infringement, and refusal to grant new trial on obviousness, and affirms determination that claims are not indefinite. The patent relates to applying suction or reduced pressure to wounds to make them heal faster, with the use of a “screen to prevent overgrowth of wound tissue.”
Claim Construction/Validity: The main issue was whether “wound” was limited to skin-level problems, or also included deeper problems, because certain of the prior art treated holes in internal organs (known as fistulas). The majority reasoned that all the examples in the patent were “skin wounds,” so the narrower construction was the right one. [ed.: doesn’t the majority’s use of the term “skin wound” itself suggest that the word “wound,” standing alone, is broader?] Although the district court erred by declining to provide a construction for the term, the error was harmless because it seemed that the jury must have used the narrower construction in order to find the claims nonobvious. As a second issue on obviousness, it also seems that there is an implicit dispute over what it means to “treat” a wound, since certain prior art drained fluid from wounds-I guess the jury found that drainage does not itself treat the wound even if it enables the wound treatment to work or work better. [ed.: note that this is one of those issues that straddles the boundary between claim construction (a legal determination) and infringement (a factual determination)] A new trial was not warranted merely because a pre-KSR TSM instruction was provided, because none of the prior art treated a wound, and thus motivation to combine was not relevant.
Indefiniteness: The term “selected stage of healing” was not indefinite, because the patent provided examples of such selected stages; the requirement of reducing bacteria at least 50% was not indefinite under Honeywell v. ITC even though there were multiple ways to test, because the patent discussed one way to test; and another term was not indefinite simply because the inventors provided some sound bites in their testimony onto which the defendant latched.
Direct Infringement of “Screen” Claims: The claims required the screen to prevent overgrowth of tissue, and the jury was allowed to conclude that the gauze in the accused product did not do so.
Indirect Infringement of “Intermittent Suction” Claims: There was substantial evidence from the founders of the defendant that they did not believe they infringed, so the jury could find lack of intent for inducement.
New Trial: KCI complained about certain evidence and arguments, but it all had legitimate purposes, so there was no need for a new trial.

Judge Dyk dissented because he did not think the claims should be limited to skin-level wounds, but should get their more expansive ordinary meaning.


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.