Welcome to Winston & Strawn’s Federal Circuit Patent Decision Summaries. This bulletin provides a short summary of, and links 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.
To determine whether matter incorporated by reference into a patent satisfies the disclosure-dedication rule, the host patent must inform one of skill in the art “that the incorporated document contains subject matter that is an alternative to a claim limitation” and the disclosure in the incorporated document must be of such specificity that one of skill in the art “could identify the subject matter that had been disclosed and not claimed.”
SanDisk Corp. v. Kingston Tech. Co., Inc. et al., No. 2011-1346 (Fed. Cir. Oct. 9, 2012).
The patents at issue covered systems and methods to manage data in flash memory systems and reduce wear and tear on the memory cells. After the district court issued its claim construction order, the patentee withdrew its infringement allegations with respect to certain claims of three of the asserted patents and Both parties filed for summary judgment shortly thereafter. The district court granted the patentee’s motion with respect to its allegations of contributory infringement but granted the alleged infringers’ motion on all of the remaining claims. The patentee challenged the district court’s claim constructions and argued that it erred in entering summary judgment of non-infringement.
The patentee’s challenges to the district court’s non-infringement ruling addressed the application of the disclosure-dedication rule. It argued that the disclosure in the specification did not amount to a dedication because the alleged disclosed embodiment was a figure in another patent that was incorporated by reference into the patent at issue. The Federal Circuit held that to determine whether the incorporated subject matter satisfies the disclosure-dedication rule, the host patent must sufficiently inform one of skill in the art “that the incorporated document contains subject matter that is an alternative to a claim limitation.” The incorporated document must be assessed to determine “whether the disclosure of [the] subject matter is of such specificity that one of ordinary skill in the art could identify the subject matter that had been disclosed and not claimed.” The patent at issues did not satisfy the first prong of this analysis and the Federal Circuit overturned the district court’s ruling.
A copy of the opinion can be found here.
To establish a sufficiently strong causal nexus to constitute irreparable harm, consumer demand must be directly tied to the allegedly infringing feature.
Apple Inc. v. Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC, No. 2012-1507 (Fed. Cir. Oct. 11, 2012).
On February 8, 2012, Apple Inc. brought suit against several Samsung entities, alleging that Samsung’s Galaxy Nexus smartphone infringes eight patents, including U.S. Patent No. 8,086,604 (the “‘604 patent”) and seeking a preliminary injunction. The independent claim of the ‘604 patent is directed at an apparatus for “unified search.” Unified search refers to the ability to access information on more than one data storage location through a single interface. Apple alleged that Samsung’s Quick Search Box, which is the unified search application of Samsung’s Galaxy Nexus, infringes claim 6.
The district court granted Apple a preliminary injunction, enjoining Samsung from selling its Galaxy Nexus smartphone. Samsung appealed. Only the ‘604 patent was at issue on appeal. At the outset, the Federal Circuit granted Samsung’s motion for a temporary stay of the injunction, expedited the appeal, and in that light held in abeyance Samsung’s subsequent motion for a stay pending appeal.
The Federal Circuit reversed and remanded, holding that the district court had abused its discretion in entering an injunction enjoining the sales of the Galaxy Nexus. At issue on appeal was whether the district court’s decision to grant injunctive relief based on its analysis of the likelihood of success and irreparable harm was proper.
The Federal Circuit first addressed whether Apple had established a clear showing of irreparable harm. The court held that the district court abused its discretion in determining that Apple had established a sufficient causal nexus. The relevant question under the causal nexus inquiry is to what extent the harm resulting from selling the accused product can be ascribed to the infringement. Here, Apple’s evidence of causal nexus is limited. Apple presented no evidence that directly ties consumer demand for the Galaxy Nexus to its allegedly infringing feature — unified search. The record did not otherwise permit an inference that the allegedly infringing features of the Galaxy Nexus drive consumer demand. For these reasons, the court reversed.
A copy of the opinion can be found here.
A court may find that an accused device infringes an asserted patent even though it does not literally meet an explicit limitation if there is an insubstantial change in the way the [accused] device meets the limitation due to advances in technology.
In Re Energy Transp. Grp., Inc., Nos. 2011-1487, -1488, -1489 (Fed. Cir. Oct. 12, 2012).
The asserted patents generally relate to technology for reducing acoustic feedback in a programmable digital hearing aid. The alleged infringer sought an appeal [on] from the district court’s denial of its motions for JMOL of no infringement under the doctrine of equivalents. The Federal Circuit affirmed the district court’s ruling that the alleged infringer infringed one of the two patents.
The Federal Circuit “reviews the grant or denial of a motion for JMOL or for a new trial under the law of the regional circuit.” Here, the Federal Circuit reviewed the district court’s decision under the law of the Third Circuit. Under Third Circuit law, the Federal Circuit conducted a plenary review of the district court’s decisions concerning JMOL and determined if there was insufficient evidence from which a jury could reach its conclusions, viewing the evidence in the light most favorable to the non-movant. The jury found that one of the asserted patents was infringed using a “verdict form requir[ing] only a yes/no response to the question [of] whether [the alleged infringer’s] products infringed each of the asserted claims.” Although the alleged infringer argued that it was not explicit in the verdict form whether its accused products met the claim limitations, “there was substantial evidence from which to conclude that . . . each of the disputed limitations” were met. Specifically, the claims required an external host to calculate and program filter coefficients. In contrast, the accused devices did not have an external host, rather the calculation and programming were performed inside the hearing aid. Hence, the external host limitation was not literally met, nor did the jury’s verdict detail how that limitation was met.
Nonetheless, the Federal Circuit held that “[w]hile the improvement in technology allows the defendants’ products to constantly recalculate filter coefficients using electronics located on the hearing aid, the accused devices nonetheless perform the same function in substantially the same way, with substantially the same result claimed by the [asserted patent].” Moreover, in its attempt to invalidate the asserted patents, the alleged infringer failed to show that the range of equivalence included the prior art. Indeed, case law states that “the patentee bears the ultimate burden of persuasion to show that its claims do not cover the prior art,” but at the same time, the alleged infringer must still present prior art showing that the “asserted range of equivalence would encompass the prior art.” Here, the alleged infringer did not present prior art supporting its position.
A copy of the opinion can be found here.
|If you have questions about the summaries that appeared in this bulletin, or would like to learn more about any of these cases, please contact one of the litigation partners listed here. If you have questions or comments about Winston & Strawn’s Federal Circuit Patent Decision Summaries or would like to be added to the mailing list, please contact one of the editors: Kathleen Barry at (312) 558-8046, Mike Brody at (312) 558-6385, Jim Hurst at (312) 558-5230, or Scott Blackman at (202) 282-5795.|
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