Cumberland Pharms., Inc. v. Mylan Institutional LLC, No. 12 C 3846, Slip Op. (N.D. Ill. Oct. 2, 2015) (Pallmeyer, J.). Judge Pallmeyer, after a bench trial, found that defendants (collectively “Mylan”) had not met their burden of proving plaintiff Cumberland’s ‘445 patent – to an intravenous treatment for suspected acetaminophen overdoses – was invalid by … Continue Reading
Fujitsu Ltd. v. Tellabs, Inc., No. 09 C 4530, Slip Op. (N.D. Ill. Sept. 26, 2012) (Holderman, C.J.). Chief Judge Holderman granted defendant Tellabs’ motion for summary judgment of invalidity in this patent case. As an initial matter, the Court held that Tellabs was limited to the arguments set forth in its Local Patent Rule … Continue Reading
Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 9845, Slip. Op. (N.D. Ill. Sep. 18, 2009) (Guzman, J.)
Judge Guzman granted defendant's motion for summary judgment of obviousness in this patent dispute regarding a retractable tether alarm system. The Court held that the asserted prior art '805 patent was analogous prior art based upon the Graham test. The inventor of the patent-in-suit was attempting to solve the problem of telephone wires "laying all over" in stores. And the '805 patent, to a retractable reel assembly for telephone wires would have been relevant to the inventory analysis. The Court also noted that prior art need not be in the same field to be analogous. The Court held that the '805 patent combined with the '098 patent's alarm triggering and sensing system taught every element of the patent-in-suit for two reasons:
Plaintiff's denial of defendant's statement of material fact that the prior art '805 and '098 patents taught all elements was denied without citing any factual proof. Such a denial is equivalent to an admission.
A review of the '805 and '098 patents showed each element of the patent-in-suit, only a combination of the '098 patent's alarm system with '805 patent's the retractable reel was required.
The Court then held that combining the '805 patent's retractable telephone cord reel with the '098 patent's alarm triggering and sensing system rendered the patent-in-suit obvious. Plaintiff's expert declaration stating that neither the prior art nor the security field generally evidenced any motivation to combine the prior art patents, did not persuade the Court. The expert's statements were conclusory and KSR expressly stated that prior art need not be in the same field as the patent-in-suit.
Finally, plaintiff's secondary consideration evidence regarding commercial success was not sufficient. Plaintiff offered no proof that its commercial success flowed from the merits of its invention.
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I published an article in the most recent edition of the John Marshall Review of Intellectual Property Law surveying the application of the Twombly "plausibility" pleading standard, in place of the former any set of facts regime, to patent cases -- The Uneven Application of Twombly in Patent Cases: An Argument for Leveling the Playing Field (click here to read it). I found that district courts have largely followed the Federal Circuit's one case addressing Twombly, which unfortunately involved a pro se plaintiff, and held that Twombly did not change the pleading standards for patent plaintiffs. But despite that ruling, many district courts are requiring that patent defendants plead affirmative defenses and, in some cases, counterclaims to the higher plausibility standard. This creates a harmful dichotomy which can be remedied in two ways: 1) as some courts already do, use strict Local Patent Rules to require early disclosures of plaintiff's claims followed in short order by defendant's defenses; or 2) as at least the Western District of Wisconsin already does, require patent plaintiffs to identify the asserted claims and the accused products. Either or both level the playing field for the parties and come at little cost to plaintiffs who already have a Fed. R. Civ. P. 11 pre-suit investigation requirement.
In addition to my article, there are several excellent pieces in Volume 8, Issue 1 of Review of Intellectual Property Law, including:
European IP attorney Paul Cole provides a Eurpoean view of the KSR obviousness standard -- click here to read the article;
Timothy Trainer looks at inconsistent international application of TRIPS and discusses what can be done to better protect intellectual property worldwide -- click here to read the article.
Lawrence Ebert (of IPBiz fame) draws lessons from the patenting and licensing of the transistor -- click here to read the article;
Vangelis Economou argues that a covenant not to sue should not destroy a court's declaratory judgment jurisdiction over a patent defendant's invalidity and inequitable conduct counterclaims and that the Federal Circuit should overturn its Super Sack decision -- click here to read the article;
Nicholas Dernick looked at sovereign immunity -- click here to read the comment;
Graham Liccardi considered the Computer Fraud & Abuse Act as a vehicle for getting federal jurisdiction of trade secret disputes -- click here to read the comment; and
Mark Petrolis argued that fair use should not be an absolute defense to a moral rights violation -- click here to read the comment.
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Baldwin Graphic Sys., Inc. v. Siebert, Inc., No. 03 C 7718, 2008 WL 4083145 (N.D. Ill. Aug. 27, 2008) (Moran, Sen. J.)*
Judge Moran granted defendant's summary judgment of invalidity as to plaintiff's patented technology for cleaning printing press components. The Court previously granted defendants summary judgment of noninfringement on a reissued patent and the patent at issue in this opinion, but the Federal Circuit reversed as to the patent at issue after revising the Court's claim construction - click here for more on this case in the Blog's archives.
After holding that each element of the claims were taught by various pieces of prior art, the Court considered whether the art could be combined pursuant to the Supreme Court's KSR standard. The Court held that the creation of strict new industry standards and a finite number of solutions that met the standards created jurisdiction for combining the prior art references:
The introduction of strict regulations regarding the use of high VOC solvents was an outside impetus to begin using low VOC solvents to clean presses. By plaintiff's own admission, the existing spray bar/dry roll systems worked poorly with low VOC solvents. Therefore, a problem needed to be solved. The mechanics of printing press design led to a finite number of solutions. The pieces for the ultimately embraced solution were all present in the prior art, and it was only a matter of time before they were put together in the manner described in the asserted claims of the '976 patent. We find this to be true, particularly in light of KSR's instruction that "Common sense teaches ... that familiar items may have obvious uses beyond their primary purposes, and in many cases a person or ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." KSR, 127 S.Ct. at 1742. See also, Muniauction, Inc. v. Thomson Corp., ___ F.3d ___, 2008 WL 2717689, at *6-*10 (Fed. Cir. July 14, 2008); Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1160-63 (Fed. Cir. 2007).
The Court also found the patent invalid because "reduced air content" was indefinite. The patent did not teach how or when to measure the air content reduction. Because three different experts could start the calculation from three different baselines and get three different, but equally correct results, the term was indefinite.
* Click here for more on this case in the Blog's archives..
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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.
The Court also held that while its initial grant of summary judgment of willfulness was made before the Federal Circuits' decision In Re Seagate, the undisputed facts also warranted summary judgment of willfulness pursuant to Seagate's objective recklessness standard. Limited Brands was aware of BASC's patent both before the suit was filed and before it began making the infringing candle tin. In fact, Limited Brands had extensive discussions with BASC regarding BASC's specifications for candle tins. Furthermore, Limited Brand's main defense - advice of counsel - was negated because Limited Brands did not disclose its opinion by the Court's deadline for doing so.
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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.
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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.
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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 … Continue Reading
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.… Continue Reading
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 … Continue Reading
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 … Continue Reading