IP Newsflash

The Federal Circuit reversed a summary judgment order of infringement after interpreting an asserted claim of U.S. Patent No. 9,736,689 (the “ʼ689 Patent”) more narrowly than the district court. In short, the district court erred when, and despite claim language to the contrary, it treated certain claim elements as “optional” in an effort to cover all disclosed embodiments. Because the patentee did not offer evidence of infringement under the correct construction, the Federal Circuit ordered the district court to enter summary judgment of noninfringement.

Chief Judge Saris of the District of Massachusetts has granted-in-part a product manufacturer’s motion seeking summary judgment of claim preclusion based on patentee’s prior assertion of the same patent against a component supplier. The court explained that none of the patent claims could be asserted against products that used components supplied by a third party that had previously faced allegations of infringing the same patent but had successfully invalidated the only patent claim that had been asserted. The court also ruled, however, that the patentee could assert the remaining claims against products that used components made by other suppliers.

The Federal Circuit recently reversed a district court’s grant of summary judgment of invalidity for lack of written description under 35 U.S.C. § 112. The Federal Circuit held that the district court had incorrectly determined that one of the disclosed embodiments imposed limits on the scope of the invention. The Federal Circuit based its decision on the disclosures about the variety of problems solved by the invention and the originally filed claims.

In a February 11, 2016, decision, Judge Andrews of the District of Delaware granted in part and denied in part a summary judgment motion of noninfringement filed by Defendant Micron Technology, Inc. Plaintiff HSM Portfolio sued Micron over patents relating to image sensors. Specifically, U.S. Patent No. 5,030,853 requires that each inverter in a chain increase in size by “less than a predetermined factor times the width of the N-channel of the immediately preceding inverter stage.” The court found that the patentee intended to use a specific equation in the specification to calculate the “predetermined factor.” Since Plaintiff relied on a different equation for the limitation, the court found that there is no literal infringement. Further, the court concluded that the specification expressly identifies a role for the claim limitation—using the specific equation to calculate the predetermined factor. Thus, the court held that Plaintiff cannot use the doctrine of equivalents to capture the subject matter based on a different equation.

In a precedential opinion, the Federal Circuit affirmed the district court’s order granting summary judgment that the doctrine of laches barred the plaintiff’s inventorship claim. This is the third appellate decision since SCA Hygiene Products v. First Baby Products involving laches. In SCA Hygiene Products, the Federal Circuit en banc reaffirmed laches as a defense to patent suits.

Laches is an equitable defense to patent infringement when a patentee delays bringing an infringement suit. As background, the plaintiff filed a complaint against the defendants, requesting correction of inventorship of a U.S. patent, which was assigned to the defendants. The plaintiff initially developed the invention claimed in the U.S. patent. He then disclosed the details of the invention to the defendants. The defendants subsequently filed a German application and a PCT patent application from which the U.S. patent issued, but did not name him as an inventor in either application. After the plaintiff discovered the PCT patent application during its pendency, he initiated litigation against the defendants in both German and European courts to correct inventorship. After losing his claims abroad, the plaintiff filed the present litigation against the defendants in the U.S.

In a case of first impression involving actual notice under 35 U.S.C. §154(d), the Federal Circuit affirmed the district court’s grant of summary judgment denying Plaintiff’s claim for pre-issuance damages.