September 13, 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 three patent cases that were appealed from the district court level and decided by the Federal Circuit during the 34th calendar week of 2007. All opinions are precedential unless otherwise indicated.

In re Seagate Technology, LLC. (08/20/2007) (errata: LINK): please refer to Greg Duff’s summary of this case, entitled “Federal Circuit Clarifies Willfulness Standard” available here: LINK

Ormco Corporation, et al. v. Align Technology, Inc. (08/24/2007): appeal of grant of summary judgment that four patents in suit were not infringed and are invalid, with cross-appeal of grant of summary judgment of invalidity of certain claims of a fifth patent (affirmed-in-part and reversed-in-part); discussion of patents related to computer-aided design and manufacture of custom orthodontic appliances (U.S. Patent Nos. 5,447,432, 5,683,243, 6,244,861, 6,398,548 and 6,616,444); “[i]t is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude”; “[w]hen the application of prosecution disclaimer involves statements from prosecution of a familial patent relating to the same subject matter as the claim language at issue in the patent being construed, those statements in the familial application are relevant in construing the claims at issue”; “[b]ecause the court correctly granted summary judgment as to some but not all of the claims of the Ormco patents, we affirm in part and reverse in part the judgment as to the Ormco patents … [and] [b]ecause the court correctly granted summary judgment of invalidity of the specified claims of the ’548 patent, we affirm that judgment”

Shum v. Intel Corporation, et al. (08/24/2007): appeal of decision dismissing plaintiff’s claims for correction of inventorship and several state law claims (vacated, reversed, and remanded); discussion of patent related to optoelectronic assemblies (U.S. Patent No. 5,977,567, entitled “Optoelectronic assembly and method of making the same”); “[a] correction for inventorship claim under [35 C.F.R.] section 256 creates a cause of action in federal courts that authorizes a district court to resolve inventorship disputes over issued patents”; “[w]ith regard to the correction of inventorship claim under § 256, “the critical question for joint conception is who conceived, as that term is used in the patent law, the subject matter of the claims at issue”; “[b]ecause we conclude that the district court erred in conducting a bench trial on the inventorship claim prior to a jury trial on the state law claims when there were common underlying factual issues, and erred in dismissing the unjust enrichment claim on the pleadings, we vacate, reverse, and remand”


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Mark Reichel
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