November 21, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the next two patent cases that were appealed from the district court level and decided by the Federal Circuit during the 46th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Connell, et al. v. KLN Steel Products Company, LTD. (doing business as KLN Steel Products Company), et al. (11/15/2007, non-precedential): appeal from a district court order transferring the appellee’s affirmative defense (under 28 U.S.C. § 1498(a)) to the Court of Federal Claims (vacated and remanded); discussion of patent related to a bedding assembly having a storage area integrated therewith (U.S. Patent No. 6,611,973, entitled “Bed structure with storage area”); KLN’s challenge to the federal circuit’s appellate jurisdiction rejected because the district court was, in fact, transferring the case under 28 U.S.C. § 1631 to cure what it perceived to be its “want of jurisdiction”; 28 U.S.C. § 1404(a) cannot provide a basis for the transfer order in this case because the Court of Federal Claims is not a “district or division” under § 1404(a); 28 U.S.C. § 1631 cannot form the basis for the district court’s transfer to the Court of Federal Claims because it did not lack jurisdiction over KLN’s § 1498(a) defense; the United States is not an indispensable party to this dispute between private parties for the reason that “[w]hen a plaintiff is harmed by the acts of several persons, all may be essential sources of evidence in a suit against any. But if this possibility automatically requires that all be joined, the rule that joint tortfeasors are not by virtue of their jointness indispensable parties . . . would be overthrown”

Canon, Inc. v. GCC International Limited, et al. (11/16/2007, non-precedential): appeal from grant of preliminary injunction enjoining the defendants from “making, using, offering for sale, or selling in the United States, or importing into the United States, any product that falls within the scope of claim 58 of U.S. Patent No. 6,336,018, including, without limitation, [certain identified] toner cartridges . . . .” (affirmed because no abuse of discretion); discussion of patent related to toner cartridges (U.S. Patent No. 6,336,018, entitled “Electrophotographic image forming apparatus, process cartridge, and drive mount for photosensitive drum”); “[i]n patent cases, traditional rules of equity apply to requests for injunctive relief”; “[i]n considering whether to grant a preliminary injunction, a court must consider whether the patent owner has shown: (1) a reasonable likelihood of success on the merits; (2) the prospect of irreparable harm to the patent owner in the absence of the injunction; (3) that this harm would exceed harm to the alleged infringer when subject to the injunction; and (4) that granting the injunction is in the public interest” (from Pfizer v. Teva Pharmaceuticals); regarding (1), the court stated that “Canon has established a substantial likelihood—albeit not a certainty—of success on its claim that Defendants have infringed Claim 58 of the '018 Patent” in part because the replacement of the toner cartridge part of the combination (of the toner cartridge and the claimed "hole defined by twisted surfaces”) would not constitute a permissible repair, noting that instead, the extend of the refurbishment (namely the replacement of the entire toner cartridge” would be “disproportionate to the overall value of the parts that were not replaced”; regarding (2), the court agreed with the district court’s conclusion because of Canon’s demonstration of the potential of substantial irreparable harm and the Defendants’ failure to make any such demonstration; the public interest favors a free market and enforcement of patents, so that aspect of the analysis does not favor either party; “[a] request for a preliminary injunction is evaluated in accordance with a ‘sliding scale’ approach: the more the balance of irreparable harm inclines in the plaintiff’s favor, the smaller the likelihood of prevailing on the merits he need show in order to get the injunction”; grant of preliminary injunction affirmed because “the district court reasonably evaluated Canon’s likely success on the merits and the irreparable harm balance and did not abuse its discretion in granting the preliminary injunction”

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Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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