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.

Continue Reading Claim Construction Reversal Requires New Trial

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. The first looks at cases discussing eBay Inc. v. MercExchange, L.L.C., 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). Here they are:*
Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3446144 (N.D. Ill. Nov. 29, 2006) (St. Eve, J.). — Granting a permanent injunction in a case between competitors.
Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2007 WL 1017751 (N.D. Ill. Mar. 30, 2007) (Moran, J.). — Granting a preliminary injunction in a case between competitors and holding that in eBay the Supreme Court limited the automatic presumption of irreparable harm based upon infringement.
For further analysis of post-eBay decisions, check out my post about Michael Smith’s analysis (click here) and my post discussing Ray Nimmer’s thoughts on the potential for compulsory licensing regimes because of eBay (click here).
* 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 comprehensive list of decisions nationwide (updated through the end of 2007) go to the Fire of Genius.

Continue Reading Injunctions Post-eBay

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:
Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 4287503 (N.D. Ill. Dec. 4, 2007) (Coar, J.).
Se-Kure Controls, Inc v. Diam USA, Inc.
Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Jan. 3, 2007) (Moran, Sen. J.).
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.

Continue Reading Willfulness Post-Seagate

Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 06 C 4440, Min. Order (N.D. Ill. Jul. 13, 2007) (Manning, J.).
In the first Northern District opinion to address the Supreme Court’s MedImmune declaratory judgment standard, Judge Manning denied plaintiff Black & Decker’s (“B&D”) motion to dismiss defendant Robert Bosch Tool Corp.’s (“Bosch”) declaratory judgment counterclaims for lack of subject matter jurisdiction. In a prior case between the parties before Judge St. Eve (numerous prior opinions are discussed in the Blog’s archives), B&D asserted that two models of Bosch’s Power Box radio (the “Old Power Box”) infringed B&D’s two patents (the “Old Patents”). Shortly before Judge St. Eve held trial in the previous case, B&D brought this suit against Bosch asserting that Bosch’s new model of its Power Box radio (the “New Power Box”) infringed a third patent (the “New Patent”). At about the same time, B&D sought leave to present evidence at trial before Judge St. Eve that the New Power Box infringed the Old Patents. Judge St. Eve, however, held that B&D had not disclosed the New Power Box as an accused product and that Bosch would be prejudiced by adding it immediately before trial. After the trial before Judge St. Eve, the jury returned a verdict that the Old Power Boxes willfully infringed certain claims of the Old Patents.
Shortly after Judge St. Eve excluded the New Power Box from her trial, B&D amended the complaint in this case to allege infringement of the Old Patents. In response, Bosch added declaratory judgment counterclaims regarding a third set of B&D patents (the “Smith patents”) which B&D had never asserted against Bosch. Bosch argued that an actual controversy existed because of the history of litigation between the parties and B&D’s prior testimony that it placed a high value on the exclusivity its patents provided in the workplace radio marketspace. B&D countered that, despite filing two suits against Bosch, B&D had never asserted the Smith patents against Bosch, or any other party. B&D also argued that St. Eve had already dismissed similar counterclaims in the last case for lack of actual controversy. But St. Eve’s decision was based upon the Federal Circuit’s old reasonable apprehension test, which the Supreme Court’s MedImmune decision overruled. Looking at “all of the circumstances,” as required by MedImmune, the Court held that an actual controversy existed. Among other reasons, the Court noted that the wide-ranging dispute between the parties regarding the workplace radios, suggested that it was in the parties’ best interests to resolve any dispute regarding the Smith patents.

Continue Reading Northern District’s First Post-MedImmune DJ Decision

Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 06 C 4440, 2007 WL 1232089 (N.D. Ill. Apr. 25, 2007) (Manning, J.).
Judge Manning granted defendant’s, Robert Bosch Tool Corp. (“Bosch”) Fed. R. Civ. P. 12(c) motion for judgment on the pleadings, holding that plaintiff’s, Black & Decker (“B&D”), patent infringement claims against Bosch’s new product regarding B&D’s previously asserted patents were barred by res judicata. In the prior case before Judge St. Eve (you can see numerous prior opinions in the Blog’s archives), B&D asserted that two models of Bosch’s Power Box radio (the “Old Power Box”) infringed B&D’s two patents (the “Old Patents”). Shortly before trial, B&D brought the instant suit against Bosch asserting that Bosch’s new model of its Power Box radio (the “New Power Box”) infringed a third patent (the “New Patent”). At about the same time, B&D sought to be able to present evidence at trial before Judge St. Eve that the New Power Box infringed the Old Patents. Judge St. Eve, however, held that B&D had not disclosed the New Power Box as an accused product and that Bosch would be prejudiced by adding it immediately before trial. In St. Eve’s case, the jury returned a verdict that the Old Power Boxes willfully infringed certain claims of the Old Patents.

Continue Reading Infringement Verdict on Old Product Precludes Suit on New Product

Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883937 (N.D. Ill. Dec. 27, 2006) (St. Eve, J.).

Judge St. Eve denied defendant’s emergency motion to prohibit plaintiff from sending Rule 65(d) notice letters regarding the Court’s permanent injunction to defendant’s customers (more on this case and the injunction in the Blog’s archives). But before analyzing defendant’s emergency motion, the Court first addressed defendant’s prior motion to clarify the injunction which the Court previously denied. In the motion to clarify, defendant stated that it had sold approximately 150,000 infringing radios to various resellers prior to being enjoined. Defendant argued that those resellers should be free to sell their supplies of infringing radios. The Court denied the motion because it was first raised in a sur-reply brief regarding plaintiff’s motion for a permanent injunction without presentation of any detailed facts, legal argument or supporting case law. 


Continue Reading Make Your Arguments Early and Often: Counsel are Both Advocates and Officers of the Court

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 denied defendant’s motion for vacature of a lost profits award and for a new trial.  First, defendant argued that the jury’s finding that it induced infringement could not stand because it shipped the product at issue with an AC power cord (non-infringing) and a battery (infringing), but plaintiff had not shown that each individual sale of a product resulted in an infringing use.  Prior to trial defendant argued that plaintiff must show a one-to-one correspondence between each unit sold and a customer’s direct infringement citing Chiuminatta concrete Concepts, Inc. v. Cardinal Indus., Inc., 1 Fed. Appx. 879 (Fed. Cir. 2001) (unpublished op.).  The Court denied that argument.  In its post-trial motion, defendant argued that proof of sales is not sufficient for an award of induced infringement citing Golden Blount, Inc. v. Robert H. Peterson Co., 438 F.3d 1354 (Fed. Cir. 2006).  But the Court distinguished Golden Blount because the issue in that case was that some product was returned to the alleged infringer before being assembled into an infringing product, which may or may not have been sold.  There was no induced infringement because the product at issue may never have been sold.  In the instant case, the Court held that the product with the infringing configuration had been sold and, therefore, upheld the jury’s finding of induced infringement.


Continue Reading Jury’s Award Is Supported By The Evidence