Justia U.S. Federal Circuit Court of Appeals Opinion Summaries

In litigation concerning patents covering various aspects of dynamic random access memory (DRAM) to minimize the bottleneck in the ability of computers to process data through memory and synchronous dynamic random access memory (SDRAM), the other type of new memory technology, the district court upheld the defendant's patents and found infringement. In parallel litigation, the district court had concluded that the defendant had spoliated documents in contravention of a duty to preserve because litigation was reasonably foreseeable prior to the defendant's second document shred day; in that case, the Federal Circuit upheld the determination of spoliation, but remanded with respect to the sanction. In this case, the Federal Circuit remanded for reconsideration of the spoliation issue, but affirmed the court's construction of the term "bus" and its determinations that the defendant had not waived its right to litigate and concerning adequacy of written description and obviousness. Applying the proper standard compels a finding that the litigation was reasonably foreseeable. The destruction of the documents could reasonably constitute a crime, so piercing the attorney-client privilege, as in the parallel case, is appropriate.

Patents issued to Rambus covered various aspects of dynamic random access memory (DRAM)to minimize the bottleneck in the ability of computers to process data through memory. Rambus initially believed the patents broad enough to encompass synchronous dynamic random access memory (SDRAM), the other type of new memory technology, but later amended its applications to cover SDRAM. Micron claimed that its production of SDRAM products did not infringe Rambusâs patents and that Rambusâs patents were invalid and violated antitrust laws. The district court held that the patents were unenforceable against Micron because Rambus had engaged in spoliation by intentionally destroying relevant, discoverable documents in derogation of a duty to preserve them and did not reach the validity of the patents. The Federal Circuit affirmed with respect to spoiliation, vacated in part, and remanded. The district did not explain why only dismissal would vindicate the aims of deterring future spoliation; protecting the defendants' interests; and remedying the prejudice defendants suffered as a result of Rambusâs actions.

The Board of Patent Appeals and Interferences affirmed the rejection of claims related to controlled-release tablets containing the opioid narcotic oxymorphone as obvious. The Federal Circuit upheld two rejections, stating that secondary considerations did not compel a holding of nonobviousness, and vacated a third as not supported by substantial evidence.

The patent, issued in 2000, is generally directed to lead frame based semiconductor packaging that supports and protects the integrated circuit module (chip), while providing electrical pathways between the chip and external devices. An examiner denied a 2001 reissue claim. The Board of Patent Appeals and Interferences affirmed. The Federal Circuit affirmed; 35 U.S.C. 251 does not allow a patent holder to gain, by reissue, what was surrendered to obtain allowance of the original claim. The subject reissue claims were broader than the patented claims and the broader aspects relate to surrendered subject matter, but the reissue claim does not âmaterially narrowâ the claims relative to the original claims so that full or substantial recapture of the subject matter surrendered during prosecution is avoided.

The company sells computer networking products, including firewalls, and filed a false marking claim against a "hacker" after the company was charged with infringement in a separate suit. The hacker's website claimed patent on a firewall product, but did not offer the product for sale; the company claims that the actual product was destroyed in a harddrive crash in 1999. The district court dismissed, reasoning that the website had not marked an âunpatented articleâ under 35 U.S.C. 292(a) because the âmarkingâ referred to the project and did not claim that the software was functioning on the site and that, even if the marking could be imputed to the site generally, the hacker had obtained two patents. The court characterized the company's complaint as alleging that the public was misled into believing that the site was running on software that no longer exists. The Federal Circuit affirmed and awarded costs.

The district court found a patent for a genetic test for Type I hereditary hemochromatosis invalid and rejected a claim of infringement. The Federal Circuit affirmed. The patent did not satisfy the written description requirement of 35 U.S.C. 112, which requires the inventor to disclose the claimed invention so as to allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed. Given the immaturity of the science at the time of filing, the filing represented a research plan; the requirement cannot be satisfied by later-acquired knowledge. The patent claim was also "anticipated;" every limitation was found either expressly or inherently in a prior application.

The Wellman patents disclose polyethylene terephthalate (âPETâ) resins for use in plastic beverage containers, claim that prior PET resins shrank or grew hazy when hot-filled, and disclose slow-crystallizing PET resins. Wellman claimed indirect infringement by Eastman. The district court found certain Wellman patents invalid. The Federal Circuit affirmed in part, holding that five patents are invalid for intentional failure to disclose the best mode of practicing the technology. The court reversed a finding that certain claims were indefinite under 35 U.S.C. 112. A claim need only provide a discernible boundary between what is claimed and what is not claimed; in this case, a person of ordinary skill in the art would follow standard industry guidance for conditioning plastics and could understand the bounds.

The Tennessee holder of a patent on a pet-access door received communications from a New Jersey company concerning cooperative marketing of a portable pet-access door, but did not respond until the New Jersey company indicated that it had obtained patent 141. The companies negotiated; the owner of the New Jersey company traveled to Tennessee to demonstrate the product and the parties signed a non-disclosure agreement, with a provision identifying Tennessee as the forum of any litigation. When the Tennessee company sought a patent on a similar item, the New Jersey company claimed infringement. The Tennessee district court dismissed an action seeking a declaration of noninfringement and of invalidity of patent 141. The Federal Circuit affirmed, finding that the court lacked personal jurisdiction over the New Jersey defendant. Only activities of the patentee relating to enforcement or defense of the patent, not actions relating to commercialization, give rise to personal jurisdiction in a declaratory judgment action. The New Jersey company's efforts to interest the Tennessee company in its product were insufficient to vest jurisdiction; the New Jersey company's only activities relating to enforcement consisted of correspondence. The suit did not arise from the non-disclosure agreement.

The holder of a patent for a device used to heat gas inserted into the abdomen for expansion during laparoscopic procedures obtained summary judgment finding infringement by a similar device. The Federal Circuit affirmed. The district court correctly construed the claim limitation âhaving a temperature within 2°C of the predetermined temperatureâ and properly declined to read in a limitation that the gas must always fall within a 4°C range of the predetermined temperature.

After a jury found willful patent violation, the district court entered an injunction ordering the defendant to stop making, using, and offering infringing television broadcast receivers (infringement provision) and to disable the DVR functionality in existing receivers (disablement provision). The Federal Circuit remanded, noting that the injunction would be in effect after its decision. The district court found the defendant in contempt. The Federal Circuit vacated in part, first rejecting the "two-step" process for evaluating contempt of patent injunctions. A district court, familiar with underlying parties and issues, has broad discretion in deciding to hold contempt proceedings. The court vacated the holding of contempt of the infringement provision and, in part, the damages awarded for continued infringement and remanded. The defendant's diligence and good faith efforts are not a defense to contempt, but the district court applied the wrong test. Proper analysis requires focus on the differences between the features relied upon to establish infringement and the modified features of the newly accused products. The court affirmed the finding of contempt of the disablement provision and related sanctions, rejecting claims of vagueness and overbreadth.