Court Employs Summary of Construed Claim Terms

Posted on July 22, 2008 by R. David Donoghue

Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, Slip Op. (N.D. Ill. Jun. 19, 2008) (Guzman J.)

Judge Guzman construed the disputed terms in plaintiff’s patent to a retail store security alarm system for portable devices. Of particular note, the Court held that a “retracting mechanism” was a means plus function element. While “mechanism” does not create a perception of means plus function language, the Court noted Federal Circuit precedent that “mechanism” generally lacked sufficient structure. And that held true in this case, as evidence by the fact that both parties identified structure from the specification that allegedly defined the claimed mechanisms.

The Court also provided a very useful summary of its constructions at the end of the opinion. The claim construction summary is an excellent writing device, like an executive summary, that substantially increases the ease of use of the opinion. Hopefully more courts will adopt Judge Guzman’s structure.

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Willfulness Post-Seagate

Posted on February 21, 2008 by R. David Donoghue

Brian Higgins at the Maryland IP Law Blog posted an analysis of significant willfulness decisions post-In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007) -- click here for the post and click here for a subsequent post discussing Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, 2008 WL 169029 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.).  Of the eleven decisions Higgins identified, three were Northern District decisions and one was a Federal Circuit decision analyzing a Northern District case.  Here are my posts on the Northern District decisions:

As you can infer from the relatively small number of cases identified by Higgins, there remains a lot of law to be written about Seagate before the standard is well settled.  I suspect that within 18-24 months there will be a relatively large body of law, including numerous Federal Circuit decisions exploring the new standard's outlines.  Until then, patent litigants will face a degree of uncertainty regarding willfulness.  Of course, defendants will generally be glad to have some uncertainty in exchange for plaintiffs's higher willfulness hurdle.

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Court Grants Summary Judgment of Infringement & Denies Invalidity

Posted on May 17, 2007 by R. David Donoghue

Vanguard Prods. Group, Inc. v. Diam USA, Inc., No. 05 C 1323, Slip Op. (N.D. Ill. May 16, 2007) (Bucklo, J.).*

Judge Bucklo granted plaintiffs summary judgment of infringement and denied defendants summary judgment of invalidity.  The Court first construed the two claim terms at issue -- "electrically coupled" and "via the modular connector."  In both cases, the Court adopted the plaintiffs' construction after a detailed review of the intrinsic and extrinsic evidence.  Because neither term was in the original application or appears in the specification, the intrinsic evidence focused on the use of the terms within the claims.  Defendants also attempted to use claim language from a parent application to support their constructions, but the Court held that the prosecution of a term in a parent application generally does not limit different terms in its progeny.  In the instant case, the Court found that the parent application had used the broader term "electrical connection" instead of "electrically coupled" which weighed against defendants' construction.  Having ruled in plaintiffs' favor on the claim construction, the Court held that defendants' products infringed the asserted claims of plaintiffs' patents.  And the Court held that defendants' asserted prior art did not anticipate plaintiffs' patents.

*  Because I beat Westlaw on this one, you can access a copy of the Court's opinion here.  Please note that the Court issued a subsequent order modifying the opinion by deleting footnotes three and four, which were not intended to be part of the opinion.

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