Semiconductor Energy Laboratory Co. v. Yujiro Nagata

Plaintiff and assignee of U.S. Patent No. 6,900,463 (“’463”), Semiconductor Energy Laboratory Co., Ltd. (“SEL”) brought an action against Yujiro Nagata who is listed on the ‘463 patent as a co-inventor under a theory of “Violation of Federal Patent Law.”  The complaint attempted to enlarge the doctrine of assignor estoppel alleging that it was a violation of federal patent law for the assignor, Nagata, to testify in a proceeding between SEL and Samsung on behalf of Samsung alleging that the documents were forged and that the ‘463 patent was therefore unenforceable. The district court held and the Federal Circuit affirmed that the doctrine of assignor estoppel is a defensive doctrine that can only be invoked when an assignor attacks a patent on grounds of unenforceability or inequitable conduct and therefore dismissal was proper for lack of subject matter jurisdiction.

Full Citation: Semiconductor Energy Laboratory Co. v. Nagata, __ F.3d __, No. 2012-1245 (Fed. Cir. Feb. 11, 2013).

Find the full opinion here.

Cephalon, Inc. v. Watson Pharmaceuticals, Inc.

Patentee Cephalon alleged infringement of U.S. Patent Nos. 6,200,604 (“’604”) and 6,974,590 (“’590”) in response to Watson Pharmaceuticals (“Watson”) filing for an Abbreviated New Drug Application.  The district court found, after a bench trial, that the patents were not infringed and that the patents were invalid for lack of enablement.  The Federal Circuit affirmed in part and reversed in part finding that, although the district court did not clearly err in finding no infringement, Watson failed to prove lack of enablement by clear and convincing evidence as a matter of law.  First, the Federal Circuit noted that the district court misconstrued the standard for proving lack of enablement by ignoring the presumption of enablement and applying a novel burden-shifting framework.  Second, the Court observed that Watson had provided no evidence as to why the embodiments and formulations recited by the patents failed to enable the invention, ultimately concluding that the “[u]nsubstantiated statements indicating that experimentation would be ‘difficult’ and ‘complicated’ [were] not sufficient.”

Full Citation: Cephalon, Inc. v. Watson Pharmaceuticals, Inc., __ F.3d __, No. 2011-1325 (Fed. Cir. Feb. 14, 2013).

Find the full opinion here.

Brilliant Instruments, Inc. v. GuideTech, LLC

Declaratory defendant, GuideTech appealed the trial court’s grant of summary judgment that Brilliant Instruments, Inc. did not infringe three related GuideTech patents: U.S. Patent Nos. 6,226,231 (“’231), 6,091,671 (“’671”), and 6,181,649 (“’649”).  The Federal Circuit reversed the lower courts ruling, holding that, with respect to the ‘231 patent, the testimony of GuideTech’s expert, Dr. West, as well as the schematic submitted to the court raised a genuine issue of material fact.  Specifically, the issue was whether, when operating in One-Channel-Two-Edge mode, the circuits in question “contained within” them two-timing circuits or whether “borrowing” the timing circuits while in this mode did not infringe the patent in question.  With respect to the ‘671 and ‘649 patents, the court held that GuideTech had raised a genuine material issue that, though the capacitor in question was part of the first current circuit, the circuit might still infringe under the doctrine of equivalents.  Judge Dyk dissented on this second holding, which found that the accused invention axiomatically could not achieve the same result as the result in question.  In otherwords, Judge Dyk noted that the claim that “’the shunt can direct current the shunt can direct current to flow from the first current circuit to the second current circuit or from the first current circuit to the capacitor,” is an implausible fear because the capacitor is contained within the aforementioned “first current circuit.”

Full Citation: Brilliant Instruments, Inc. v. GuideTech, LLC, __ F.3d __, No. 2012-1018 (Fed. Cir. Feb. 20, 2013).

Find the full opinion here.

Function Media, L.L.C., v. Google Inc.

Plaintiff-appellant Function Media (“FM”) appealed the district court’s invalidation of U.S. Patent No. 6,446,045 for indefiniteness and abdication of claim construction to the jury, as well as irreconcileable verdicts regarding U.S. Patent Nos. 7,240,025 and 7,249,059.  The Federal Circuit affirmed the invalidation noting that, though there were descriptions of what function the software performed, some recitation of how it performed that function was necessary.

The appellant further took exception to the district courts claim construction of the terms “ad creation/processing,” “selection,” and “processing.”  The Court upheld the construction noting that, given the steps recited, the terms, though related, were applied to distinct stages and achieved different outcomes and thus their distinct meanings were appropriate.  With regard to “selection,” the court held that “FM may not object to the court’s decision to instruct the jury to apply the claim construction that FM itself proposed.”  Finally, the Court affirmed the construction of the term “published” as properly requiring that the ads be sent to media venues rather than being so broad as to be simply displayed to consumers.

The Federal Circuit further rejected FM’s argument that claim construction questions were improperly submitted to the jury, instead characterizing the disputed incident during trial as a question of improper argument, objections FM failed to preserve.  And, because there was no plain error, and FM made no argument that substantial interests of justice turned upon these issues, FM’s arguments failed.

The Court also rejected FM’s appeal that the jury verdict was irreconcilable. The Court found that because the questions asked on the verdict form required legal instruction and not merely fact finding, FM was required to object before the jury was dismissed in order to preserve the objection under the law of the Fifth Circuit,

Finally, the Federal Circuit denied FM’s motion for a new trial on several grounds.  The court held that there was evidence in the record to support the non-infringement verdict and that FM had waived its opportunity to object to any misapprehension of law by the jury as with regard to claim construction as discussed above.

Full Citation: Function Media, L.L.C., v. Google Inc., __ F.3d __, No. 2012-1020 (Fed. Cir. Feb 13, 2013).

Find the full opinion here.

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