obvIPat - Obviously Patentable

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CAFC Weekly: August 13, 2010

by Orlando Lopez

The precedential opinions of this week cover inequitable conduct, joint infringement and the difficulty in proving joint infringement and claim construction.

Inequitable conduct and joint infringement are considered in Golden Hour Data Systems, Inc. v. emsCharts, Inc. Golden Hour owns a patent for information management systems and methods related to emergency medical transport. Golden Hour accused emsCharts of infringing some of the claims of the patent and of jointly infringing, together with Softech, other claims of the patent. At District Court, the jury found both emsCharts and Softech guilty of joint infringement and emsCharts guilty of direct infringement; however, the District Court Judge found the patent to be unenforceable due to inequitable conduct. In terms of inequitable conduct, the inequitable conduct arises due to a marketing brochure, produced by another company (AeroMed) and received after the patent was filed. Golden Hour’s patent counsel provided a description of the AeroMed product to the Patent Office, but did not provide the brochure. The product description was based only on the front page of the brochure. The District Court found that the brochure would have had an effect on the patent prosecution and that it was withheld intentionally. The CAFC reversed and remanded back to the District Court to reconsider intent. The CAFC stated that if the patent attorney did not read the brochure it was gross negligence, but it did not constitute intent to deceive. I would venture to guess that we will see this case again.

The Golden Hour opinion has received more publicity due to their joint infringement consideration. The District Court Judge, under Judgment as a Matter of Law, reversed the jury decision of joint infringement. The CAFC upheld the District Court Judge‘s finding of no joint infringement, since each accused party practiced only some of the elements of the claim and no party had control or direction over the infringement process; it was the control or direction that was missing here. The CAFC noted that, if emsCharts sold its emsCharts.com program and Softtech’s Flight Vector software together, as Golden Hour stated, and both programs together practiced all the elements of the claim, emsCharts would be a direct infringer. However, Golden Hour accused emsCharts of only joint infringement of some claims, together with Softtech, and failed to accuse emsCharts of directly infringing those claims. Oops!

In Baran v. Med. Device Techs., Inc., the CAFC considered the interpretation of the claims-claim construction. Dr. Baran holds two patents related to automated biopsy instruments and sued Medical Device Technologies and others for infringement of those patents. After the District Court construed the claims, the District Court granted summary judgment of non-infringement to the defendants. Baran appealed the claim construction and the CAFC affirmed the District Court’s decision. One interesting item is the construction of the functional, means-for limitation, “release means for retaining the guide in the charged position.” The District Court interpreted the claim as requiring both a release function and a retention function and the CAFC agreed. The claim construction presents a good lesson on the dangers in writing a means-for limitation. Judge Kathleen O’Malley, the District Court Judge that heard the case, is slated to fill the present vacancy at the CAFC.

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