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.

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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Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 2007-1243, 1244, Slip Op. (Fed. Cir. Jan. 7, 2008).*

The Federal Circuit affirmed the Northern District jury’s obviousness verdict, and Judge St. Eve’s denial of defendant’s inequitable conduct claim. But the Federal Circuit reversed the Northern District’s construction of “power conversion circuit” and remanded for further proceedings and, perhaps, a new trial.** The Federal Circuit held that the Northern District relied largely upon claim differentiation for its construction and, in the process, gave the patent scope beyond the disclosed invention.

The Federal Circuit held that the Northern District’s pre-KSR obviousness jury instruction was not reversible because defendants identified no evidence in the record that supported an obviousness finding even under the broader KSR standard.

* Click here for extensive coverage of this case in the Blog’s archives.

**  The Court scheduled a status conference early next week.  We may learn at that conference whether a new trial is being scheduled or whether summary judgment will be briefed or a settlement conference scheduled first.

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As I mentioned several days ago, Northwestern's excellent IP Law Week series begins Monday, January 14.  The student IP group is hosting a panel each day next week.  The Monday through Thursday panels will run from noon until 1:15.  Friday's panel starts at 1:40 and ends at 2:35.  All events will be held in Rubloff 140.  The panels are listed below and promise to be very interesting.  I am part of Monday's Patent Reform panel, and I look forward to seeing you there.

• Monday: Patent Reform – Motivations, Impact and Controversy
  
• Tuesday: Balancing the Right to Life vs. the Right to Patent
  
• Wednesday: Copyright Law and Media Distribution over the Internet
  
• Thursday: Patent and Pharmaceutical / Drug Issues
  
• Friday: KSR v. Teleflex and Patent Prosecution

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I have been meaning to highlight the University of Michigan Law Review's recent Supreme Court, Federal Circuit, and Patent Law edition for some time.  The day before the Michigan-Ohio State match-up for the Big Ten title and a trip to the Rose Bowl seems like an appropriate time to do it.  The article contains excellent analysis of the future of patent law and the effects of recent Supreme Court rulings, in particular KSR.  The specific articles are:

• Rebecca S. Eisenberg, The Supreme Court and the Federal Circuit: Visitation and Custody of Patent Law
  
• John F. Duffy, KSR v. Teleflex: Predictable Reform of Patent Substance and Procedure in the Judiciary
  
• Harold C. Wegner, Making Sense of KSR and Other Recent Patent Cases
  
• Robert A. Armitage, Now That the Courts Have Beaten Congress to the Punch, Why Is Congress Still Punching the Patent System?
  
• Stephen G. Kunin & Andrew K. Beverina, KSR's Effect on Patent Law

Each article is worth the read, perhaps as you watch the game tomorrow.

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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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Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 1549498 (N.D. Ill. May 24, 2007) (Coar, J.).

Judge Coar denied defendant Sandoz, Inc.'s ("Sandoz") motion to stay the Court's preliminary injunction pending appeal to the Federal Circuit pursuant to Fed. R. Civ. P. 62(c).  The Court previously granted plaintiff Abbott's motion for a preliminary injunction (you can read more about that decision and related cases in the Blog's archives).  The PI enjoined defendant Sandoz from selling a generic version of Abbott's patented extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL).  Sandoz argued that the PI should be stayed pending appeal because of conflicting Federal Circuit law regarding the Court's claim construction and because of the Supreme Court's KSR decision. 

First, Sandoz argued that two different Federal Circuit panels had issued differing rulings construing the claims at issue.  Judge Coar rejected this argument because the construction relied upon in the PI ruling was the Federal Circuit's second, broader claim construction.  The Court explained that the "only rational assumption" was that the second panel was aware of the constructions in the first, but relied upon something different in the record or identified a fact missed by the first panel.  Further, the Court predicted that the Federal Circuit would not retreat from its second opinion to its first, prior opinion.

Second, the Court held that the KSR decision did not change its analysis of Sandoz's likelihood of success on its obviousness argument.  The Court provided a detailed explanation of KSR and its reasoning, but differentiated the current case because the Court held that one of the limitations in the Abbott claims did not exist in Sandoz's cited combination of prior art references.  Because the references did not disclose one of the elements of the claims, whether or not the Court used a strict application of the Federal Circuit's teaching, suggestion or motivation test did not change the outcome of its analysis.  Both the Federal Circuit's and the Supreme Court's standards required that all elements be disclosed by the combined prior art references.

Finally, the Court held that Sandoz had not provided sufficient evidence that it would be irreparably harmed.  Sandoz argued that if it could not enter the market at the same time as other generics, which are not subject to PI's, pharmacists would be reluctant to later restock their shelves with Sandoz's generic version of the drug.  But the Court reasoned that the lure of generics is their prices, not their brand recognition, so Sandoz should have no trouble re-entering the market at a later date should it prevail.

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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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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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I do not want the Blog to get off track, so this will be my last post for awhile on the subject, but here is a roundup of blogs discussing yesterday's argument:

Chicago's own 271 Patent Blog

SCOTUS Blog

Patently-O

Patent Baristas

I will be back at the Blog's traditional subjects tomorrow with Northern District case updates.

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Following up on my post yesterday, The Chicago Daily Law Bulletin has published this story regarding today's Supreme Court argument in KSR International Co. v. Teleflex Inc.  The argument centered around whether the Federal Circuit's obviousness test should be revised (more on the KSR case from Patently-O here and here).  Of course, Justices often play devil's advocate in oral arguments, so it is dangerous to presume outcomes based upon oral argument, but it looks like it was good legal theater. 

Here are a few of the most interesting comments as reported in the Chicago Daily Law Bulletin piece:

Justice Scalia "derided the test as 'gobbledygook.'''

Chief Justice Roberts:  called the current test "a confusing 'layer of Federal Circuit jargon [that is] worse than meaningless.'''

Just Souter wondered whether overturning the current obviousness test would generate a flood of law suits.

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The Chicago-Kent College of Law is hosting two seminars in the upcoming weeks that IP practitioners will find very useful.  On this Thursday, October 26, from 9:00 AM - 12:00 PM, the school is hosting a seminar entitled, "Copyright at the World Intellectual Property Organization: An Update."
At the seminar key World Intellectual Property Organization officials will update you on pending and emerging international copyright issues, and will address the challenges facing WIPO and international copyright policymakers.  Please note, prior registration is preferred and can be accomplished by email or fax.

On Wednesday, November 1st, from 3:00 - 4:00 PM, the Chicago-Kent College of Law is hosting its third annual Federal Circuit Roundtable.  The Roundtable, composed of former Federal Circuit law clerks, will address the topic, "Not So Obvious: Patent Law, the Supreme Court, and KSR International." The scheduled participants are Meredith Martin Addy, Brinks Hofer Gilson & Lione, Leonard D. Conapinski, McAndrews, Held & Malloy, Ltd., Sasha D. Mayergoyz, Latham & Watkins LLP, and Michael R. Weiner, Marshall, Gerstein & Borun LLP.  The Roundtable will be moderated by Chicago-Kent Professor Timothy R. Holbrook.  The Roundtable is free and registration is not required.  Because my wife, Laura L. Donoghue, former law clerk for the Hon. Timothy B. Dyk, has spoken at prior Roundtables, I can vouch for this as an excellent event that is worth a few hours out of your Wednesday afternoon.

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