February 12, 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 patent cases that were appealed from the district court level and decided by the Federal Circuit during the sixth calendar week of 2007. All opinions are precedential unless otherwise indicated.

Medtronic Navigation, Inc., (formerly known as Surgical Navigation Technologies, Inc.), et al. v. Brainlab Medizinische Computersysteme GMBH, et al. (02/05/2007, non-precedential) (erratum: LINK): appeal of summary judgment of noninfringement of four patents as a matter of law (affirmed), discussion of patent relating to image-guided surgical products enabling the precise localization of surgical instruments during surgery. (U.S. Patent Nos. 4,722,056 (“Reference display systems for superimposing a tomagraphic image onto the focal plane of an operating microscope”), 5,383,454 (“System for indicating the position of a surgical probe within a head on an image of the head”), 5,389,101 and 5,603,318 (both “Apparatus and method for photogrammetric surgical localization”)), review of judgment as a matter of law, review of original claim construction based upon support solely within the specification, “claims are best construed to preserve their validity,” preclusion by prosecution history estoppel from asserting infringement under doctrine of equivalents based on narrowing of claim scope during prosecution, district court judge set aside jury verdict for infringement under doctrine of equivalents because testimony only supported direct infringement contentions and not equivalents

Dippin' Dots, Inc., et al. v. Mosey, et al. v. Esty, Jr., et al. (02/09/2007): appeal of claim construction, summary judgment of noninfringement, judgment that all claims are obvious, patent enforceable due to inequitable conduct, and antitrust violation for procurement of patent through fraud (affirmed all except antitrust counterclaim, which was reversed); discussion of patent relating to a process for making a form of a cryogenically-prepared novelty ice cream product (sold under Dippin’ Dots brand - U.S. Patent No. 5,126,156, Method of preparing and storing a free flowing, frozen alimentary dairy product”), issuance of patent in part by arguing commercial success to counter an obviousness rejection by the examiner, construction of term “bead” to mean having a “smooth spherical appearance” as supported by the specification, the term “comprising” raising a presumption that a list of elements is nonexclusive, “‘[c]omprising’ is not a weasel word with which to abrogate claim limitations,” prior art under the 35 U.S.C. § 102(b) on-sale bar acting also prior art for obviousness purposes under 35 U.S.C. § 103, market testing sales not under the experimental use exception, inequitable conduct for not disclosing sales of product prior to application date, insufficient evidence to support Walker Process antitrust claim (fraud by omission)


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Mark Reichel
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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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