In Intirtool, Ltd. v. Texar Corp., No. 03-1394 (Fed. Cir. May 10, 2004), the federal circuit reversed judgments (1) of invalidity of Intirtool’s ‘253 Patent, (2) of unenforceability for inequitable conduct, and (3) that damages were barred under the doctrine of laches.
Intirtool’s ‘253 Patent is directed to hand-held punch pliers for simultaneously punching and connecting overlapping sheet metal. Intirtool sued Texar based on its sale of a very similar tool purchased from other suppliers. The district court held the ‘253 patent invalid under § 112, first paragraph based on the lack of any disclosure on how the pliers ‘simultaneously punch[ed] and connect[ed] overlapping sheet metal’ portions as recited in the claim preamble. The district court also held the ‘253 patent unenforceable based on a ‘knowingly false’ statement to the PTO that the pliers simultaneously punched holes and connected ceiling grids. Lastly, the district court concluded that damages accrued prior to the filing of the lawsuit were barred by laches because Intirtool did not file a lawsuit within the six-year period prior to suit when Intirtool should have known that Texar sold competing tools.
In a wholesale reversal, the federal circuit held that the preamble of claim 1 was not a limitation because it contained no elements or features necessary to give life to the claim; the tool was described in complete and exacting structural detail in the remaining portion of claim 1. Nor did the prosecution history contain any statements showing reliance on the preamble as a limitation.
The federal circuit also found that the statements made by Intirtool in the prosecution history alleged to form a basis of inequitable conduct (repeated statements that the tool simultaneously punched holes and connected ceiling grids) did not rise to the “threshold level of materiality” required to sustain the defense. Nor were the statements false.
Finally, the federal circuit found that there was no clear indication that Intirtool had actual or constructive knowledge of Texar’s first purchase of allegedly infringing pliers from the competitive manufacturer sufficient to start the laches clock.
To view the full decision visit http://www.aplf.org/mailer/Issue230.doc
To discuss this topic further, please feel free to contact the author Michael R. Dzwonczyk, (firstname.lastname@example.org), at Sughrue Mion, PLLC in Washington DC., USA.
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