May 30, 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 last two patent cases that were appealed from the district court level and decided by the Federal Circuit during the 21st calendar week of 2007. All opinions are precedential unless otherwise indicated.

Monsanto Co. v. McFarling (05/24/2007): appeal of award by district court for damages for patent infringement, rejection of McFarling’s arguments for vacating the judgment of liability, and refusal to grant Monsanto’s request to modify the permanent injuction (District Court's rulings on McFarling’s appeal and Monsanto’s cross-appeal affirmed); discussion of two patents related to a system for weed control employing genetically modified crops that resist glyphosphate herbicide (U.S. Patent No. 5,352,605, entitled “Chimeric genes for transforming plant cells using viral promoters,” and U.S. Patent No. 5,633,435, entitled “Glyphosate-tolerant 5-enolpyruvylshikimate-3-phosphate synthases”); patent license between the parties for Roundup Ready soybean seeds, and McFarling saved seeds he grew for planting in subsequent seasons in violation of the license agreement (as determined by the courts); argument of patent misuse in the license agreement rejected as the prior arguments made by the appellate court for one patent-in-suit applies to the other patent-in-suit; rejection of antitrust counterclaim as “simply a repackaged version of his patent misuse defense”; damages for patent infringement are to be “adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court”; “technology fee” per bag of Roundup Ready soybean seed not the sole measure of damages, as there was an “added obligation imposed on all authorized licensees under the Technology Agreement,” namely to purchase seed from an authorized seed store; jury’s damages verdict was supported by evidence and was not grossly excessive; court rejected Monsanto’s argument that McFarling only be able to purchase Roundup Ready soybean seed with “express authorization from Monsanto”

Honeywell v. Universal Avionics (05/25/2007): appeal of issues of claim construction, infringement, and subject matter jurisdiction; cross-appeal of final decision that other remaining claims were not barred by public use or premature sales activity; appeal of decision that Honeywell did not commit inequitable conduct; appeal of denial of commercial counterclaims (claim construction vacated, remanded for new infringement determination, and affirmed district court’s retention of jurisdiction over the withdrawn claims and the decision that 35 U.S.C. § 102(b) does not erect a bar); discussion of five patents related to aircraft terrain warning systems (U.S. Patent Nos. 5,839,080, 6,092,009, 6,122,570, 6,138,060 and 6,219,592); fact-specific claim construction review of several terms performed; “[w]ithout a customary meaning of a term within the art, the specification usually supplies the best context for deciphering claim meaning”; exclusion of expert testimony affirmed when testimony addressed doctrine of equivalents arguments not considered by the same expert a day earlier; decision to maintain jurisdiction over withdrawn claims maintained as patentee did not affirmatively withdraw all claims of two patents-in-suit; discussion of on-sale bar and public use regarding defendant’s invalidity contentions; no inequitable conduct as patentee provided express statements on its commercial flights and industry demonstrations


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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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