March 26, 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 first three patent cases that were appealed from the district court level and decided by the Federal Circuit during the 12th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Cellco Partnership (doing business as Verizon Wireless) v. Broadcom Corp. (03/19/2007, non-precedential): review of whether or not the district court abused its discretion when dismissing a declaratory action (no abuse of discretion); trial courts have “unique and substantial discretion” in determining whether or not to decide case where they have declaratory judgment jurisdiction; no abuse of discretion by trial court in dismissing case because of judicial efficiency and because the party filing the declaratory judgment action “has not shown sufficient harm to require immediate resolution of its case” prior to the conclusion of other proceedings

Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc., et al. (03/20/2007): appeal of second issued permanent injunction for infringement under doctrine of equivalents but not for direct infringement (reversed grant of summary judgment of infringement, lower court should grant defendant’s motion for summary judgment of non-infringement, and other issues addressed herein); discussion of patent relating to polyaxial bone screws (U.S. Patent No. 5,474,555, “Spinal implant system”), prosecution history estoppel “prevents a patentee from recapturing under the doctrine of equivalents subject matter surrendered during prosecution to obtain a patent,” amendments to overcome 35 U.S.C. § 112 rejections may give rise to estoppel, no literal infringement and no infringement under the doctrine of equivalents because of Festo, defendant’s redesigned screws do not meet the limitations of either claim at issue

Espeed, Inc., et al. v. Brokertec USA, L.L.C., et al. (03/20/2007): appeal of final judgment of claim invalidity, patent unenforceability, and final judgment in favor of defendants (affirmed unenforceability due to inequitable conduct); discussion of patent relating to automated methods and systems for trading financial instruments (U.S. Patent No. 6,560,580, “Automated auction protocol processor”), declarations submitted to disclose prior art system as including different rules than those disclosed by the patent, to overturn a discretionary ruling [like patent unenforceability] of a district court, the appellant “must establish that the ruling is [1] based upon clearly erroneous findings of fact or [2] a misapplication or misinterpretation of applicable law or that [3] the ruling evidences a clear error of judgment on the part of the district court,” submitted declaration contains false statements that were inherently material, “[f]alse statements are more likely material when embodied in declarations or affidavits submitted to the PTO,” patentee’s prior art system included new rules as disclosed in patent, intent to deceive determination by district court not highly erroneous, affirmed unenforceability of patent due to inequitable conduct so other issues not addressed


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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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