Koito v. Turn-Key
In Koito Mfg. Co., Ltd. et al v. Turn-Key Tech., LLC et al., Nos. 03-1565, -1603 (Fed. Cir. August 23, 2004), the federal circuit affirmed a jury verdict of noninfringement and the district court's grant of Turn-Key's JMOL motion to overturn the jury verdict of invalidity under §§112, but vacated the denial of Turn-Key's JMOL motion with respect to anticipation and obviousness and remanded for consideration of whether all of the evidence offered by Koito supported those verdicts.
Turn-Key's ’268 patent is directed to a method of strengthening injection-molded plastics by cross-laminating layers of plastics -- here, used in the manufacture of tail light lenses for automobiles. After Turn-Key sued a number of Koito's customers, Koito brought a DJ action alleging invalidity on a number of grounds. Turn-Key counterclaimed for infringement. At trial, a jury found all of the claims of the ’268 patent to be invalid under §112, and certain claims to be invalid under §§ 102 and 103. On Turn-Key's JMOL motion, the district court upheld the finding of invalidity under §§ 102 and 103, but granted the JMOL motion as to the other invalidity grounds. Turn-Key also moved for a new trial alleging that the jury's verdicts of invalidity and infringement were against the great weight of evidence, which motion the court denied.
Affirming the noninfringement determination, the federal circuit held that a reasonable juror could have found that Koito's methods and lenses lacked the claim limitation to a "predetermined general direction." The federal circuit rejected Turn-Key's claim construction challenge because Turn-Key failed to preserve its claim construction arguments at trial and also did not object to the jury instructions defining this claim term. In addition, trhe federal circuit found that Koito put forth sufficient testimonial evidence showing that it did not predetermine or know beforehand the direction of flow for its lenses.
Reversing the denial of Turn-Key's JMOL motion on anticipation and obviousness, the federal circuit held it was error for the district court to have based its conclusion solely on a single prior art reference, Japanese Unexamined Application No. 148,082 ("JP ’082"). Although the JP ’082 reference was admitted into evidence, Koito failed to provide any testimony or other evidence that would demonstrate to the jury how that reference met the limitations of the claims in the ’268 patent or how the reference enabled one of ordinary skill in the art to practice the claimed invention. On remand, the district court was directed to consider Koito's other evidence of anticipation and nonobviousness.
Finally, the federal circuit affirmed the district court's JMOL grant to Turn-Key that the ’268 patent was not invalid under §112, because (1) the certificate of correction did not impermissibly broaden the patent's scope by adding new matter; (2) the claim limitation "significantly thicker and wider" was adequately supported in the specification; and (3) Turn-Key's failure to disclose a proprietary formula for determining flow direction did not demonstrate that any particular formula for achieving flow direction was required for one of ordinary skill in the art to practice the claimed invention or that undue experimentation would be required to predetermine flow direction through trial and error.
To view the full decision visit http://www.aplf.org/mailer/Issue242Koito.doc
Cardiac Pacemakers v. St. Jude Medical
In Cardiac Pacemakers, Inc. et al. v. St. Jude Medical, Inc., et al., Nos. 02, -1532, -1539 (Fed. Cir. Aug. 31, 2004), the federal circuit (1) reversed the district court's grant of a JMOL and reinstated the jury verdict that Cardiac Pacemaker's ("CPI's") ’288 patent was not invalid for reasons of obviousness and violation of the best mode requirement, (2) reversed the judgment of non-infringement, and (3) remanded for a new trial on the issue of infringement.
CPI's ’288 patent is directed to an implantable cardiac defibrillator ("ICD"), permanently installed under the skin and used to detect and treat, e.g., cardioversion. The jury found the ’288 patent not invalid, but the district court granted JMOL of invalidity for obviousness because cardioversion therapy was known, and there existed compelling motivation to combine multiple therapies in a single implanted device. Because prior art references to Haft and Duggan identified the general problem solved by the ’288 patent (i.e., treating complex cardiac arrhythmias), the district court concluded it would have been obvious to combine known methods of separate treatment.
On appeal, the federal circuit disagreed, and reinstated the jury's verdict of nonobviousness as based on substantial evidence. According to the federal circuit, the district court erroneously placed undue weight on a the Duggan reference as providing motivation to treat cardioversion, a particular form of arrhythmia at issue:
Recognition of the problem of treating complex heart arrhythmias does not render obvious the eventual solution. Recognition of a need does not render obvious the achievement that meets that need. There is an important distinction between the general motivation to cure an uncured disease (for example, the disease of multiple forms of heart irregularity), and the motivation to create a particular cure.
The federal circuit also reversed the district court's JMOL for a best mode violation, which was based on CPI’s nondisclosure of a particular battery made by Honeywell for use in the claimed ICD. While a battery was necessary to operate the ’288 device, the Honeywell battery -- which had been published and had not been concealed -- was not a part of the invention that was described and claimed in the ’288 patent.
Next, the federal circuit held that an objection under Rule 51 was not required to preserve the right to appeal a Markman ruling under the Seventh Circuit's rule in Chestnut v. Hill. That is, CPI's failure to formally object to the court's claim construction ruling when the jury was instructed on claim construction did not waive its right to challenge that construction on appeal, where (1) CPI's position was previously made clear to the court, and (2) further objection would be "unavailing and futile."
Finally, the federal circuit reversed the district court's ruling that claims directed to a "method comprising the steps of" invoked §112, ¶6. Use of that phrase did not automatically convert each ensuing step into the form of §112, ¶6, nor did it invoke the presumption that each ensuing step was in step-plus-function form; rather, the absence of "step for" language created the presumption that each ensuing step was not in step-plus-function form.
To view the full decision visit http://www.aplf.org/mailer/Issue242Cardiac.doc
To discuss these topics further, please feel free to contact the author Michael R. Dzwonczyk, (firstname.lastname@example.org), at Sughrue Mion, PLLC in Washington DC, USA.
The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.
APLF · PO Box 7418 · Washington, DC · 20044-7418