Welcome to Winston & Strawn’s Federal Circuit Patent Decision Summaries. This bulletin provides a short summary of, and a link to, the precedential patent cases decided by the Federal Circuit last week. We hope that these summaries are useful in keeping you updated on the Federal Circuit’s patent decisions.

A broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is invalid for obviousness.

Comaper Corp. v. Antec, Inc., Nos. 2009-1248, 1249 (Fed. Cir. Mar. 1, 2010).

Following a five-day trial, the jury returned a special verdict that defendant willfully infringed claims of a patent relating to a cooling device designed to mount within the drive bay of a computer, that certain independent claims were not invalid as obvious, but that certain dependent claims were obvious. The district court attempted to resolve these inconsistent verdicts by concluding that the defendant had failed to present sufficient evidence that the dependent claims were obvious.

The Federal Circuit vacated the judgment because of the inconsistent jury verdicts on obviousness and remanded the case for a new trial on invalidity. The jury’s special verdict on obviousness reflected an irreconcilable inconsistency, specifically that “A broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is invalid for obviousness.” When faced with inconsistent verdicts and evidence that would support either of the inconsistent verdicts, the proper procedure was for the district court to have ordered a new trial on invalidity.

On the merits, the district court erred in resolving the inconsistent verdicts by determining that the evidence was insufficient to support verdicts of obviousness, in particular by incorrectly concluding that the prior art asserted by the defendant was not analogous to the patented invention. In determining whether prior art is analogous, two criteria are relevant: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the endeavor is involved.” Here, the prior art was analogous to the invention of the patent because it related to the same field of endeavor.

The district court also erred in concluding that defendant failed to establish sufficient similarity between the prior art and the patent, taken as a whole. The district court appeared to apply the standard governing anticipation (i.e., that all of the claim elements of the patent must appear in a single piece of prior art) rather than the standard governing obviousness, which requires considering whether two or more pieces of prior art could be combined, or a single piece of prior art could be modified, to produce the claimed invention (typically invoking the teaching-suggestion-motivation, or “TSM,” test).

A copy of the opinion can be found here.

Content solutions, such as sports trading cards, are significantly limited by theme and physical confines, meaning that the finite number of available solutions are predictable.

Media Technologies Licensing, LLC v. The Upper Deck Company, No. 2009-1022 (Fed. Cir. Mar. 1, 2010).

On summary judgment, a district court found invalid as obvious two patents covering pieces of sports memorabilia items attached to trading cards.

The Federal Circuit affirmed. The majority rejected the argument that a person of ordinary skill would not have combined the prior art references—or applied them to a sports card—because the trading card field supposedly contained an infinite number of identified and unpredictable solutions. Rather, according to the majority, “the presentation and content characteristics of trading cards are not infinite.” In other words, “Content solutions are significantly limited by the theme and physical confines of the card, and the finite number of available solutions are predictable.” Therefore, “it would have been obvious to one skilled in the art to attach a sports-related item instead of those attached in the prior art references.”

The majority also found the objective evidence of nonobviousness unpersuasive, in particular explaining that whatever commercial success the allegedly infringing memorabilia enjoyed came from celebrity, not by use of the claimed invention.

In dissent, Judge Rader faulted the majority for ignoring significant indicia of non-obviousness and for displaying “a bias against non-technical arts.” Judge Rader also found unconvincing the majority’s analysis about the finite number of solutions in the art because under this rationale, no party could receive a patent in the trading card industry if the solutions are “limited by the cards’ physical characteristics,” “theme,” and “physical confines.”

A copy of the opinion can be found here.

Federal courts have exclusive federal question jurisdiction over legal malpractice claims involving the prosecution of U.S. patent applications.

Davis v. Brouse McDowell, L.P.A., 2009-1395 (Fed. Cir. Mar. 2, 2010)

A patent applicant filed suit against her patent prosecution attorney for negligently failing to file applications under the Patent Cooperation Treaty (which provides a unified procedure for filing a single patent application in multiple countries) and for various acts of negligence relating to the preparation and filing of U.S. patent applications. The attorney successfully removed the case to federal court on federal question jurisdiction and the district court dismissed it on summary judgment.

The Federal Circuit affirmed. 28 U.S.C. § 1338(a) provides that federal district courts have exclusive jurisdiction over actions “arising under any Act of Congress relating to patents.” Specifically, such jurisdiction extends to those cases “in which a well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff’s right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.”

The malpractice complaint here presented two distinct claims: one relating to preparation and filing of the U.S. applications and one relating to the failure to timely file the PCT applications. Because the patentability of the inventions are controlled by U.S. patent law, patent law was a necessary element of the legal malpractice claims relating to the U.S. patent applications. The district court therefore properly exercised jurisdiction pursuant to 28 U.S.C. § 1338(a).

On the merits, a malpractice claimant’s ultimate burden is to establish a likelihood that the inventions would have been held patentable on examination in the PTO or any applicable national patent office, in accordance with the criteria of patentability applied during examination. Here, the plaintiff failed to provide any such evidence relating to the PCT applications, and only provided conclusory expert statements as to the U.S. patent applications. Thus, the district court properly dismissed all claims.

A copy of the opinion can be found here.

Following an order granting a permanent injunction, an infringer may still be held in contempt of that order despite good faith efforts to achieve a non-infringing design-around; and even if the infringer achieves a non-infringing design-around, it may still be held in contempt for failure to comply with the clear terms of the order.

Tivo, Inc. v. Echostar Corporation, et. al, 2009-1374 (Fed. Cir. March 4, 2010)

The infringer of a patent covering various features essential to the working of a digital video recorder (“DVR”) appealed from a district court order finding it in contempt of a permanent injunction. The district court rejected the infringer’s argument that it had achieved a non-infringing design-around, and further found that even if the infringer had achieved such a design-around, it would still be in contempt because it had failed to comply with the terms of the injunction requiring it to disable DVR technology completely from the receivers adjudged to be infringing at trial.

The Federal Circuit affirmed. Rejecting the infringer’s claim that the patentee had to prove by clear and convincing evidence that a contempt proceeding was more appropriate than a new trial, the majority agreed that the question is left to the discretion of the trial court. Specifically, where a district court finds that there is “more than a colorable difference” between the original infringing product and the redesigned product such that “substantial open issues with respect to infringement” exist, a new trial is necessary to determine further infringement and a court may not proceed with a contempt finding.

Here, however, the majority agreed that no substantial open questions of infringement remained even though the infringer made some changes to its products. Finding no reason to limit contempt hearings to situations in which the redesigned products are alleged to infringe in the exact same manner previously found to infringe, the majority explained that the district court did not err when it looked to other components that the infringer had itself previously conceded met the limitations now at issue and which the infringer did not modify.

Last, the majority rejected the infringer’s argument that evidence of its good faith suffices to protect it from any finding of contempt, despite a year-long redesign effort and an opinion of noninfringement from a respected patent law firm. A district court can give appropriate weight to good faith arguments, but there is no requirement that it accept them and the lack of intent alone cannot save an infringer from a finding of contempt.

The majority also reviewed and endorsed the district court’s interpretation of the terms of the injunction requiring the infringer to disable DVR technology completely from the infringing receivers even if that technology did not necessarily infringe. Here, the district court made clear its intent in barring certain conduct, and the infringer was not free to ignore the court’s order.

In dissent, Judge Rader faulted the majority for punishing “a good faith design-around effort” and for allowing the injunction to apply to “any DVR functionality regardless of infringement.” He concluded that the majority’s decision “discourages good faith efforts to design around an infringement verdict.”

A copy of the opinion can be found here.

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