October 02, 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 36th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Mitutoyo Corporation, et al. v. Central Purchasing, LLC (09/05/2007): appeal of grant of summary judgment of infringement and awarding damages using a 29.2% royalty rate, and cross-appeal of the judgment dismissing willful infringement claim, dismissing MAC as a party, and denying lost profit damages (affirm-in-part, reverse-in-part, and remanded); discussion of patent related to a system for measuring the relative movement of one object with respect to another (U.S. Patent No. 5,620,227, entitled “Measuring device for capacitive determination of the relative position of the two with respect to one another movable parts”); the “specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’”; “[w]illfulness does not equate to fraud, and thus, the pleading requirement for willful infringement does not rise to the stringent standard required by Rule 9(b).”; in order for a licensee to have co-plaintiff standing, it must hold “at least some” of the proprietary rights under the patent; “[b]ecause the trial court erred by dismissing Mitutoyo’s willful infringement claim and including HFTUSA’s sales in the royalty base, but rendered a proper judgment in all other respects, we affirm-in-part, reverse-in-part, and remand”

Forest Laboratories, Inc., et al. v. Ivax Pharmaceuticals, Inc., et al. (09/05/2007): appeal of order of district court entering judgment upholding the vailidity of reissue patent-in-suit and enjoining Ivax and Cipla from infringing the patent (affirmed, but injunction modified); discussion of patent related to an antidepressant composition (U.S. Patent No. RE34,712, entitled “Pharmaceutically useful (+)-1-(3-dimethylaminopropyl)-1-(4'-fluorophenyl)-1,3-dihydroiso benzofuran-5-carbonitrile and non-toxic acid addition salts thereof”); “[a] reference that is not enabling is not anticipating”; “a change in a reissue application that is only clerical does not necessarily broaden the scope of the claims and so does not render the patent invalid”; “[c]omparison of the scope of the reissue claims with the claims of the original patent is a matter of claim construction, and it is performed from the perspective of one having ordinary skill in the art”; “[a]lthough the standard of review for the issuance and scope of an injunction is abuse of discretion, whether the terms of the injunction fulfill the mandates of Federal Rule of Civil Procedure 65(d) is a question of law that this court reviews de novo”; “[w]e affirm the district court’s entry of judgment on validity and its entry of an injunction as to both Ivax and Cipla, but we modify the injunction to apply only to escitalopram oxalate”

Data Encrytption Corporation v. Microsoft Corporation, et al. (09/06/2007, non-precedential): appeal of decision granting summary judgment of noninfringement (affirmed); discussion of patent related to computer systems that encrypt and decrypt files. (U.S. Patent No. 5,584,023, entitled “Computer system including a transparent and secure file transform mechanism”); “the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance . . ., the inventor has dictated the correct claim scope, and the inventor’s intention, as expressed in the specification, is regarded as dispositive”; in light of the inventor’s disavowal of claim scope, the district court’s grant of summary judgment of noninfringement 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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