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

Minemyer v. B-Roc Reps., Inc., No. 07 C 1763, Slip Op. (N.D. Ill. Oct. 27, 2009) (Cole, Mag. J.)*

Judge Cole granted summary judgment of invalidity based upon the §102(b) on-sale bar and denied summary judgment as to invalidity based upon §102(b) public use and obviousness.

                                                             Priority Date

Plaintiff argued that its pipe coupler patent was entitled to the priority date of its provisional application because the provisional application disclosed in the drawings the tapered threads at issue, although they were not described in the specification. The Court held that figures showing tapered threads would be sufficient, but that the figures did not show tapered threads. Plaintiff alleged that enlargements of the figures showed a 1% taper. But the Court held that the original drawing did not “convey” the tapered threads with "reasonable clarity.” Even the enlargement showed “no true tapers.” Because the provisional application did not disclose the taper, the patent’s priority date was its filing date.

                                                             On-Sale Bar

The Court held that plaintiff admitted he offered the patented couplers for sale more than one year before the filing date, also known as the critical date. Plaintiff also admitted both in interrogatory responses and at deposition that his invention had been reduced to practice at the time of the offer.  Plaintiff claimed that the use was experimental, but the court held that the claim was not properly supported by evidence in plaintiff’s Local Rule 56.1 statement of material facts.

                                                             Public Use Bar

The Court denied summary judgment based upon the public use bar. The alleged prior art device was asserted against other claims in defendants’ invalidity contentions, but not against the claim at issue, claim 12. Furthermore, the evidence of the alleged prior art coupler was provided by a witness that was not disclosed in defendants’ Rule 26 disclosures or their interrogatory responses. He was first identified in a subpoena at the end of fact discovery.

                                                             Obviousness

Defendant’s obviousness arguments were based upon the same prior art as the public use bar prior art. So, summary judgment was not appropriate for similar reasons. Additionally, defendants arguments were cursory and did not even cite case law.

*  Click here for more on this case in the Blog's archives.

• Email This
• Print
• Trackbacks
• Share Link

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.

• Email This
• Print
• Trackbacks
• Share Link

Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04C 5312, Slip Op. (N.D. Ill. Sep. 25, 2007) (Moran, Sen. J.). 

Judge Moran denied plaintiff Trading Technologies’ (“TT”) supplemental summary judgment motion. The Court previously denied the original motions regarding the priority dates of the patents in suit.* In that opinion, the Court held that whether the patents could claim priority from their provisional application was a question of fact for the jury. The issue was whether disclosing the species of a single mouse click in the provisional application was sufficient support for the genus – a single action by the user – claimed in the patents in suit.

TT argued that eSpeed’s expert’s statement that the art – software engineering and user interface design – was predictable, was sufficient to take the patents out of the In re Curtis, 354 F.3d 1347 (Fed. Cir. 2004), exception (unpredictability of a species prevents support of a genus). The Court agreed that the factual issue was predictability of the art. But the Court held that eSpeed’s expert’s statement did not resolve the dispute. A generally predictable art does not mean that one of ordinary skill would understand the patentee’s description of the particular species (one-click) was necessarily in possession of the genus (one action). So the issue went to the jury.

As of this post, the jury still has this case.  I will let you know as soon as I learn the jury's verdict.  For more on this case and Trading Technologies' related cases click here for the Blog's archives.  And keep watching the Blog, while the jury deliberates and the parties try inequitable conduct to Judge Moran this week, I will continue catching up with some prior opinions from the case.

*  To read about the original summary judgment motions click here or for a copy of this opinion click here.

• Email This
• Print
• Trackbacks
• Share Link