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CAFC Weekly: March 25, 2011

by Orlando Lopez

The opinions handed down this week include an opinion that exemplifies what is analogous prior art after KSR, an opinion that considers claim interpretation in light of two different interpretations from two District Courts and one more order allowing transfer of venue.

In Innovention Toys v. MGA Entertainment, Innovention Toys owns a patent for a chess-like, light reflecting board game and sued MGA, WalMart and Toys “R” Us for infringement. The District Court found that the patent was infringed and that the claims were not obvious, and the court issued an injunction. MGA and the other defendants appealed to the CAFC. The CAFC upheld the finding of infringement, but overturned the finding of non-obviousness and vacated the injunction. The District Court had found two references to be not analogous prior art and therefore, the two references could not be used in the non-obviousness analysis. The District Court also considered the level of skill in the art to be that of a layperson. The CAFC found the references to be analogous prior art and found the level of skill in the art required for dimension to be higher than that of a layperson. The opinion is of interest because it highlights the difference in what is considered analogous prior art after KSR.

In American Piledriving Equip., Inc. v. Geoquip, Inc., American Piledriving owns a patent for pile driving devices and sued, for patent infringement, in seven District Courts around the country. Whether the accused devices infringed the patent depends largely on the interpretation (claim construction) of three terms in the claims. Of the Courts that have interpreted the claims, no two District Courts have interpreted all three terms the same way. The district courts for the Eastern District of Virginia and the Northern District of California granted summary judgment of non-infringement. American Piledriving appealed to the CAFC. The CAFC interpreted the claims, upheld the judgment of the Eastern District of Virginia for all products accused of infringement, upheld the judgment of the Northern District of California for two of the products accused of infringement, but reversed the judgment of non-infringement for one product. This opinion is an example of a typical claim construction opinion. ( However, the opinion underscores the uncertainty in claim construction and the different possible outcomes in different courts. Since claim interpretation is a mixed task (aka “mongrel task”) combining a mixture of law and facts, many have called for some deference to be given to the District Court. This opinion is the poster child for de novo review of claim construction.

The CAFC issued another order, In re Verizon Business Network Services, granting a petition to transfer a patent infringement suit to a more convenient venue. This order follows a number of other orders providing the necessary precedent for determining whether a transfer of venue request should be granted. Red River had sued Verizon and a number of other defendants for patent infringement, fighting the suit in the Eastern District of Texas. Red River is operated from Oklahoma, but incorporated in Texas. The Northern District of Texas is a more convenient venue for the parties and witnesses; however, five years ago, the Eastern District of Texas had interpreted the claims of the patents in the suit. The patents have been re-examined by the USPTO since that early suit. The CAFC found that the connection to the earlier suit was insufficient in view of the length of time that transpired and the re-examination. This order adds to the growing number of orders regarding transfer of venue.

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