Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., No. 05 C 3684, 2008 WL 839993 (N.D. Ill. Mar. 27, 2008) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan denied defendants' (collectively "Limited Brands") motion for reconsideration regarding the Court's claim construction opinion and its summary judgment opinions of infringement, validity and damages – click here to read more about those opinions in the Blog's archives. The Court previously construed the claims of plaintiff Ball Aerosol's ("BASC") patent covers a candle tine. The Court granted BASC summary judgment of infringement and validity, pre-KSR. When KSR revised the obviousness standard, the Court sua sponte ordered supplemental briefing regarding obviousness in light of KSR. Based upon that briefing, the Court again granted summary judgment of validity. The Court then granted BASC summary judgment on damages awarding it 20% royalties and finding Limited Brand's infringement willful.

The Court held that its original claim construction, validity and infringement holdings were correct and that Limited Brands had been given ample opportunities to defend itself. The Court also denied Limited Brands' argument that reasonable royalties could not be decided on summary judgment. Limited Brands' Seventh Amendment right to a jury trial regarding damages had not been violated. There is no right to a jury without a material question of fact.

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Brian Higgins's Maryland IP Law Blog post about the progeny of In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007), inspired me to do follow up posts identifying Northern District cases discussing recent major IP decisions -- click here for my post on injunctions after eBay Inc. v. MercExchange, L.L.C., 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006).  There have been a number of obviousness decisions in the Northern District since KSR Int’l Co. v. Teleflex Inc., __ U.S. __, 127 S.Ct. 1727 (2007).  Here they are:*

• Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 1549498 (N.D. Ill. May 24, 2007) (Coar, J.). -- Holding that the Court's pre-KSR analysis need not be reconsidered in light of KSR because an element was missing from the prior art, regardless of what standard was used.
  
• Herman Miller, Inc. v. Teknion Corp., No. 05 C 2761, 2007 WL 2230042 (N.D. Ill. Jul. 30, 2007) (Gettleman, J.). -- Noting that, in light of KSR, plaintiff issued a statement of non-liability and certain patents were removed from the suit.
  

• Lexion Medical, LLC v. Northgate Techs., Inc., No. 04 C 5705, Slip Op. (N.D. Ill. Jun. 8, 2007). -- Holding that the pre-KSR jury's decision would not have changed if given a KSR obviousness instruction.

These opinions suggest that KSR is not changing obviousness law in the Northern District much.  I suspect that is not true.  Once we have a larger sample of cases, including more where the initial analysis was not done pre-KSR, we will see more patents held invalid based upon obviousness.

*  A brief note on methodology:  this was not a thorough study and does not include cases that granted or denied injunctions without discussion.  For a more complete list of post-KSR decisions nationwide, go to the Fire of Genius.

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Min. Orders (N.D. Ill. Jan. 3, 2007) (Moran, Sen. J.).*

In addition to the willfulness decision discussed earlier today (click here for the post) and the invalidity decision that I will blog about early next week, Judge Moran also issued two minute orders deciding several of the outstanding post-trial motions.  The Court denied defendant eSpeed's motion for a new trial and its combined motion for judgment as a matter of law that: 1) the claims are invalid because of anticipation, obviousness, prior sale; and 2) because the claims have a June 9, 2000 priority date they were not infringed.

There are still several pending motions, including various motions regarding damages and interest on the jury's award and eSpeed's motion for an evidentiary hearing regarding inequitable conduct.  I will keep you posted as those are decided.

*  Click here to read much more about this case in the Blog’s archives.

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Herman Miller, Inc. v. Teknion Corp., No. 05 C 2761, 2007 WL 2230042 (N.D. Ill. Jul. 30, 2007) (Gettleman, J.).

Judge Gettleman construed the claims of the asserted patents covering features of swivel office chairs and granted partial summary judgment of infringement for plaintiff on one of the two patents, U.S. Patent No. 6,588,741 (the “‘741 patent”), with the exception of claim 10 which plaintiff admitted was not literally infringed, and summary judgment of noninfringement for defendant as to claim 10 of the ’741 patent and the second patent, U.S. Patent No. 6,588,842. But the most interesting part of this opinion is not the Court’s constructions or infringement analysis, but what appears to be plaintiff’s reasonableness – a trait seldom displayed at this stage of the case in my experience. At the beginning of its opinion, the Court noted that the case originally included two other patents and that the parties had filed and briefed cross summary judgment motions regarding those patents as well. But in light of the KSR v. Teleflex decision, plaintiff issued a statement of non-liability as to those patents and the parties voluntarily dismissed all of their claims and counterclaims related to those patents. It must have been an exceptionally strong obviousness case. I have read several post-KSR decisions and this is the first case in which I have seen a plaintiff voluntarily dismiss its claims in light of the “new” obviousness standard.

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Lexion Medical, LLC v. Northgate Techs., Inc., No. 04 C 5705, Slip Op. (N.D. Ill. Jun. 8, 2007).*

Judge Rosenbaum (a visiting judge, who is the Chief Judge for the District of Minnesota) denied defendants’ Fed. R. Civ. P. 60(b) for relief from the Court’s judgment.  The Court held a trial in October 2006 resulting in a jury verdict that defendants’ insufflator (a device that blows a powder, gas or vapor into a body cavity) infringed plaintiff’s patent (you can read more about the case in the Blog’s archives). In their motion, defendants argued that the Supreme Court’s April 2007 obviousness decision, KSR Int’l Co. v. Teleflex Inc., __ U.S. __, 127 S.Ct. 1727 (2007), dramatically changed obviousness law and conflicted with the jury instructions which “nullif[ied] the jury verdict.” Defendants moved the Court to invalidate two claims of the patent in suit or to order a new trial on obviousness. But the Court held that even under the KSR standard, the jury’s verdict was fully supported by evidence at trial. Because a corrected instruction would not have changed the result, the erroneous instruction was harmless.

*You can read the opinion here.

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Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., No. 06-1402, Slip Op. (Fed. Cir. May 9, 2007).

The Federal Circuit issued its first opinion analyzing an obviousness determination based upon the Supreme Court decision in KSR v. Teleflex, 550 U.S. __, 2007 WL 1237837 (2007).  The Court affirmed the district court's holding that the claim was invalid based upon obviousness and explained that obviousness is not determined by "a rigid formula disassociated from the consideration of the facts of a case."  You can download a copy of the Federal Circuit's decision here.

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The Fire of Genius has just started an excellent KSR obviousness resource.  At this page, the Fire of Genius is keeping a running tally of all cases dealing with obviousness pursuant to the KSR standard.  There is already one case -- Syngenta Seeds, Inc. v. Monsanto Co.,slip op. (Fed. Cir. May 4, 2007).  Check it frequently, I will.

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KSR v. Teleflex, 550 U.S. __ (2007).

A unanimous Supreme Court rolled back the Federal Circuit's teaching, suggestion or motivation obviousness test in favor of the Court's prior, and substantially broader, test as set forth in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966).  Justice Kennedy delivered the Court's opinion and called the Supreme Court's approach to obviousness "broad and flexible."  The Court also noted that because the parties did not dispute the prior art, the claim's scope or the level of ordinary skill in the art and because obviousness is a legal question, the district court was correct to grant summary judgment in this case.

In addition to bringing the Fed. Cir. down to size, the Supreme Court also took a swipe at the PTO:

We need not reach the question whether the failure to disclose [the prior art reference] during the prosecution . . . voids the presumption of validity given to issued patents, for claim 4 is obvious despite the presumption. We nevertheless think it appropriate to note that the rationale underlying the presumption - that the PTO, in its expertise, has approved the claim - seems much diminished here.

The KSR decision opens up obviousness and will make obviousness a much larger issue in patent cases.  And whatever else the "new" old law may do, it will keep patent litigators very busy for years to come.  You can download a PDF of the Court's opinion from the Blog's archives.

Here is a list of links to other KSR commentary across the internet, as you can see you could read about KSR all week:

Patently-O

Prof. Sarnoff via Patently-O

WSJ Law Blog (with interesting comments from several key players and practicioners)

Patent Docs

Infinite Monkey Theorem

File Wrapper

271 Patent Blog

Tech Dirt

Patent Prospector

Fire of Genius and here

Orange Book Blog (for the decisions effect on pharma patents)

Michael Barclay of Wilson Sonsini via the SCOTUS Blog

Dan Bromberg of Quinn Emanuel via the SCOTUS Blog

Chicago Tribune

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The Supreme Court issued opinions in both Microsoft v. AT&T and KSR v. Teleflex.  I just received the opinions, so I have not had time for analysis yet.  But you can click on the links for the opinions and I will report back Tuesday or Wednesday with more analysis.

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Chicago Kent Professor, and former Fed. Cir. clerk, Tim Holbrook has published a very interesting article at the Washington University Law Review's Slip Opinions blog.  In the article, Holbrook attempts to sort out obviousness and poses a new obviousness standard which he argues takes the best of the current Federal Circuit approach and the Graham v. John Deere standard created in the 1960s.  Holbrook's article is especially relevant as we await the Superme Court's KSR v. Teleflex opinion.  Here is an excerpt from the article:

Unfortunately, the debate and briefing at the Supreme Court have resulted primarily in a bifurcated world – those who agree with the Federal Circuit’s approach versus those who think we should return the state of the law to 1966, the year that the Supreme Court decided its seminal case Graham v. John Deere. The law of obviousness is not limited to this dichotomous world, however. This Essay posits a methodology that best balances the Federal Circuit’s concerns with certainty in the law with the concern of its critics that the obvious standard has been set too low. I propose a rebuttable presumption approach to obviousness, which best balances these concerns and is consistent with the Supreme Court’s approach in previous intellectual property cases.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883286 (N.D. Ill. Dec. 18, 2006) (St. Eve, J.).*

Judge St. Eve granted judgment as a matter of law for plaintiff, holding that the jury's findings of invalidity and obviousness were not supported by legally sufficient evidence.  At trial, defendant introduced an article describing a prior art radio as 102(b) prior art using its expert.  But the expert testified that one of the claim elements was missing.  Defendant argued that pictures of the radio that were not used in the article, showed the device.  But the Court held that defendant could not piece together the article, testimony and pictures to prove that the article disclosed all elements of the claimed invention.  The jury's obviousness finding was not supported by legally sufficient evidence because defendant did not present clear and convincing evidence of a motivation to combine its obviousness prior art references.

* You can find much more on this case in the Blog's archives.

 

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