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

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.

• Email This
• Print
• Comments
• Trackbacks

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.

• Email This
• Print
• Comments
• Trackbacks (1)