obvIPat - Obviously Patentable

The blog for inventors, in-house counsel, & entrepreneurs.

CAFC Weekly: June 11, 2010

by Orlando Lopez

This week we have an opinion considering the effect of false patent marking, another inequitable conduct opinion, and an opinion reviewing a grant of summary judgment for invalidity and a request for replacing the District Court Judge.

In Pequignot v. Solo Cup, Solo Cup, a manufacturer of disposable cups and lids, is the owner of two patents for cup lids.  The patents had expired when the suit was filed.  Solo Cup had continued to mark the lids with the patent number after the patent had expired, since it was expensive to change the tooling and they had an opinion of counsel which implied Solo Cup could wait to replace the tooling and eliminate the incorrect patent marking.  The statute prescribes a fine for a manufacture that falsely marks an unpatented article for the purpose of deceiving the public.  This is a qui tam style statute, where a person can sue and split the fine with the government.  The CAFC stated that an article is unpatented once the patent expires.  Additionally, the CAFC held that that marking as patented an unpatented article, while knowing that the article is unpatented, creates a rebuttable presumption of intent to deceive the public.  In this case, Solo Cup was able to rebut the presumption since they had relied on the advice of counsel and were driven by a desire to reduce costs.  The rebuttable presumption and weight of the evidence required to rebut, give some hope to the many companies that have been sued for false patent marking.

In Advanced Magnetic Closures v. Rome Fastener, Advanced Magnetic (AMC) had sued Rome Fastener (“Romag”) for infringement of AMC’s patent.  The District Court found the patent unenforceable for inequitable conduct, since AMC’s President had misrepresented himself as the sole inventor, while another AMC employee also claimed to be the sole inventor.  To prove their claim, AMC submitted contradictory expert testimony and suspect reconstructed evidence. The record had a sufficiently strong indication that AMC’s President was not the inventor, so that Chief Judge Rader and Judge Gajarsa, both opponents of the inequitable conduct plague, joined in the decision to affirm the District Court’s ruling; however, the CAFC did reverse the District Court’s ruling of sanctions against AMC’s attorneys.

In TriMed v. Stryker, the CAFC reviewed the granting by the District Court, of summary judgment of invalidity of TriMed’s patent.  This was the second time through the CAFC for this suit.  The District Court had previously granted summary judgment of non-infringement, and the CAFC had reversed and remanded for incorrect claim construction.  In the invalidity challenge for obviousness, there were a number of disputed factual questions.  Stryker also suggested that the patented device was a commonsense (common sense can be two words, or one if used as an adjective, but we should be consistent, as it is used again in next sentence)solution to a known problem.  The District Court resolved the material fact disputes in favor of Stryker, agreed with the commonsense (see above)argument without providing an explanation, and did not consider the evidence of secondary indications of non-obviousness.  The CAFC reversed the granting of summary judgment and in a very unusual ruling, also granted TriMed’s request to have the case reassigned to a different judge.

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