District of Massachusetts IP Blog

Inequitable Conduct Finding Vacated After Therasense

In May 2011 Judge Saris ruled that a patent directed to three-dimensional scanning was unenforceable due to inequitable conduct.  Following the Federal Circuit’s tightening of inequitable conduct in its Therasense decision, Judge Saris vacated her earlier decision, holding that the facts of the case did not meet the hightened standard, noting that her previous findings of materiality had been “cast to dust.”

In addition Judge Saris granted summary judgment in favor of the patentee on 93A and Walker-Process anti-trust counterclaims and granted summary judgment in favor of the accused infringer of non-infringement of the resurrected patent.  A motion for summary judgment of non-infringement of a second asserted patent was denied. 

Metris U.S.A. Inc. v. Faro Tech., Inc., 08-11187-PBS (D. Mass. Sep. 19, 2011)

3D Scanning Patent Held Unenforceable For Inequitable Conduct

Metris U.S.A. and 3D Scanners had sued Faro Technologies for infringement of Patent Nos. 6,611,617 and 7,313,264 related to three-dimensional scanning.  Following a trial, Judge Saris ruled that the ‘617 patent was unenforceable due to inequitable conduct.  The 66 page opinion lays out in great detail the facts that caused Judge Saris to issue such a rare finding. 

Antitrust Claims In Ion Beam Implantation Fight Pared Down

Following briefing to Magistrate Judge Dein as well as briefing on objections to her conclusions, Judge Gertner adopted the Report and Recommendations dismissing two claims, one alleging misleading the PTO, the other alleging conspiracy to monopolize.

 

This case stems from an infringement suit involving Patent No. 7,301,156, originally brought by Varian.  In that suit Advanced Ion asserted a number of antitrust counterclaims which were dismissed without prejudice for insufficient pleading.  [See here for a discussion of a cost award in that case.]  Instead of moving to re-plead its counterclaims, Advanced Ion chose to file them in this separate action asserting (in more detailed pleading) Walker Process claims, sham litigation claims for monopolization, and conspiracy to monopolize.

 

Following another motion to dismiss Magistrate Judge Dein recommended dismissing claims relying on fraud before the PTO regarding one set of (mis-)representations but not dismissing claims relying on a second set of omissions.  The lengthy opinion is detailed and very fact specific, but carefully walks through the alleged facts and weighs them against the appropriate pleading requirements, including those heightened by Rule 9(b).

 

Advanced Ion Beam Tech., Inc. v. Varian Semiconductor Equipment Assoc., Inc., 09-11448-NG-JGD (D. Mass. July 2, 2010)

Air Filter Patentee Successful On Summary Judgment

Plaintiff JCS (successor in interest to the original Holmes Group plaintiff) asserts infringement of Patent Nos. 6,425,932, 6,685,760, 7,041,147, and 7,276,100, directed to various configurations of replaceable air filters, against defendant RPS Products.  The latter three patents are all continuations of the ‘932 patent and were added to this case at various stages.  In particular the ‘147 claims appear to have been drafted with accused products in hand.

 

In a comprehensive decision on a number of issues, Judge Saylor effectively sides for the plaintiff across the board.

 

Infringement

 

The parties cross-moved for summary judgment on infringement, which required the court to construe new claim terms in the ‘147 patent.  The court favored plaintiff’s construction (relying partially on the doctrine of claim differentiation, validating at least one of plaintiff’s strategies in prosecuting the continuation).  Having sided with the plaintiff on claim construction, and with no dispute as to the operation of the accused products (the filters are what they are), the court entered summary judgment of literal infringement (and declined to address infringement under DOE).

 

Inequitable Conduct

 

Defendant alleged inequitable conduct by the plaintiff when it failed to disclose this litigation and certain happenings (including certain court orders) during prosecution of the ‘147 patent.  Cross motions for summary judgment were denied due to questions of fact both on materiality (whether the litigation happenings were material is not clear cut) and intent (a classic trial issue, the level of which to prove inequitable conduct depends on materiality)

 

Judge Saylor denied a motion to strike defendant’s proposed inequitable conduct expert’s testimony on materiality, but granted it regarding her testimony on intent or as to the ultimate legal question of whether plaintiff engaged in inequitable conduct.  A motion to preclude the testimony of the prosecuting attorneys due to late disclosure / conflicting invocation of the attorney-client privilege was denied.

 

Assorted Defenses

 

Plaintiff moved for summary judgment on a number of defenses.  The court granted summary judgment on the prosecution laches defense (five to seven years between initial filing and continuation filing was not excessive), written description defense (the original and common specification sufficiently disclosed a one-leg embodiment to satisfy § 112 for the corresponding claims in the continuation), obviousness (defendant failed to articulate a level of ordinary skill in the art and failed to make a case that the invention would have been obvious to one possessing such skill), indefiniteness (the court had no problem with the term “perimeter”), and statutory-double patenting (the asserted patents differ in scope).

 

The court denied summary judgment on obviousness-type double patenting since it wasn’t clear whether a terminal disclaimer was properly filed.

 

Damages

 

The court declined to strike plaintiff’s claim to damages due to discovery abuses (including failure to provide a computation of damages in plaintiff’s initial disclosures and failure to supplement the same) but it did suggest that the defendant propose an alternate sanction, such as a limited award of fees and costs. 

 

Download Judge Saylor decision

 

The Holmes Group v. RPS Prods., Inc., 03-40146-FDS (D. Mass. June 25, 2010)

Judge Young Resolves Multiple Motions In LED Patent Infringement Case

In an ongoing dispute between Gertrude Neumark Rothschild and Cree, Inc. (the case was originally pending in the S.D.N.Y. before being assigned to Judge Young sitting by designation and then transferred by joint motion to D. Mass.), Rothschild accuses Cree of infringement of Patent Nos. 4,904,618 and 5,252,499 directed to methods for producing LEDs. 

 

The parties brought various motions including a motion to dismiss for lack of standing, motions for claim construction, and motions for summary judgment.  Judge Young dealt with them all in an omnibus 100 page opinion found here.  The decision starts with an explanation of the technology behind LEDs and the semiconductors used to build them and then walks through the legal issues one by one.

 

Cree moves to dismiss arguing that because the inventions were made by Rothschild when she was an employee of Philips, Philips owns the rights and Rothschild lacks standing to sue.  This motion was denied due to a dispute of fact over whether the relevant concepts were invented after Rothschild left Philips (who was a defendant in this case prior to settling and had insinuated in certain documents that it had no claim on the patents).  The decision noted that the ultimate burden to prove standing lay with the plaintiff, despite Rothschild’s repeated invocation of the “presumption of ownership,” a concept Judge Young rejected as an improper rephrasing of the presumption of validity:  “In essence, the so-called presumption of ownership is a misnomer.”  (See here for another instance of Judge Young’s frustration with the word “presumption” in patent jurisprudence.)

 

On claim construction, Judge Young refused to alter the constructions provided by Judge Connor earlier in the case finding that they were appropriate and did not imply certain requirements as suggested by Cree.  The Judge also denied the additional constructions proposed by Rothschild.

 

Disputes of fact prevented summary judgment on anticipation, failure to enable, and failure to name co-inventors.  Though summary judgment of no anticipation entered with regard to one asserted reference.  (Mirroring his actions in the Ambit case, which resulted from his decision on expert testimony in the NewRiver case, Judge Young almost entered summary judgment of no anticipation by other references sua sponte, but Cree created a fact dispute with a late expert submission; Judge Young acknowledged the submission was late but allowed it since it came after the general notice of Judge Young new practice provided in Ambit and NewRiver.)

 

Summary judgment of no inequitable conduct was granted with regard to some issues but denied as to others.  Summary judgment of no infringement was denied due to disputes of material fact.

 

Gertrude Neumark Rothschild v. Cree, Inc., 10-10133-WGY (May 13, 2010)