May 24, 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 20th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Wechsler v. Macke International Trade, Inc., et al. (05/18/2007): appeal of decisions granting judgment as a matter of law (JMOL) that the individual defendant was personally liable for inducement of infringement and denying JMOL that the jury’s award of lost profits to the patentee was not supported by substantial evidence, and cross-appeal of the grant of summary judgment that the corporate defendant is not the alter ego of the individual defendant (reversed-in-part and affirmed-in-part); discussion of patent related to a portable device for dispensing liquids and flowing feed to animals (U.S. Patent No. 5,636,592, entitled “Portable device for feeding animals”); special jury verdict that individual plaintiff was not personally liable for infringement “essentially discarded” by district court by grant of JMOL that he was personally liable; the grant or denial of JMOL is reviewed “under the law of the regional circuit in which an appeal from the district court would normally lie”; ”the district court’s statement that finding Macke liable for willful infringement while exonerating O’Rourke would be “inconsistent and unreasonable” because Macke could not act independently of O’Rourke is clearly incorrect” (grant of JMOL in error); “[t]o recover lost profits, the patent owner must show ‘causation in fact,’ establishing that ‘but for’ the infringement, he would have made additional profits”; plaintiff here did not manufacture or sell product while defendant’s device was on the market; “[w]ithout some evidence tying the lower price Wechsler received for his product to Macke’s infringing sales or indicating that Macke’s infringing sales preempted subsequent sales by Wechsler, the jury’s award of lost profit damages was not supported by substantial evidence” (denial of JMOL in error); discussion of alter ego and piercing the corporate veil in a situation where one person is the sole shareholder, director, and officer of a company; no facts presented by plaintiff raised a genuine issue as to any material fact, and “no reasonable jury could have found that Macke was the alter ego of O’Rourke”; reversed grant of JMOL that O’Rourke was personally liable for inducement of infringement and the award of lost profits damages associated therewith; affirmed grant of summary judgment that Macke is not the alter ego of O’Rourke

McKesson Information Solutions, Inc. v. Bridge Medical, Inc. (05/18/2007): appeal of dismissal of infringement suit after district court determined that the patent in suit was unenforceable due to inequitable conduct (affirmed); discussion of patent related to a patient identification system using bar codes on the patient and his or her medications (U.S. Patent No. 4,857,716, entitled “Patient identification and verification system and method”); district court found by clear and convincing evidence that during prosecution of the patent in suit, the applicant failed to disclose the existence of a patent cited in a related application, the rejections of broad related claims by another Examiner, and that the allowance of claims in a related patent were “material omissions done with an intent to deceive”; argument that undisclosed patent was cumulative because two other disclosed patent contained all of the elements was unpersuasive; totality of evidence established that withholding the prior art patent in this case was done with an intent to deceive the USPTO; rejections made by one examiner are deemed to be material if the rejected claims are “substantially similar” to the claims pending before another examiner, and failure to disclose prior rejections in this case was done with an intent to deceive; “ a notice of allowance in a co-pending application is material if the allowed claims could conceivably have given rise to a double patenting rejection”; no error found with the district court’s finding that the patent in suit is unenforceable due to inequitable conduct, so the decision was affirmed


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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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