Federal Circuit Review | June 2014

by Knobbe Martens

District Court Improperly Limited Claim To Preferred Embodiment

In GE LIGHTING SOLUTIONS, LLC v. AGILIGHT, INC., Appeal No. 13-1267, the Federal Circuit reversed in part and affirmed in part summary judgments of non-infringement based on claim construction.

GE sued AgiLight for infringing patents relating to LEDs. The claims included the terms “IDC connector,” “optical element having a substantially ellipsoidal inner profile and generally spherical outer profile,” and “annular gasket.” After claim construction, the parties stipulated to non-infringement of some of the patents based on the district court’s claim construction, and the district court granted a motion for summary judgment of non-infringement of the other patents. GE appealed. 

The Federal Circuit reversed the district court’s construction of “IDC connector” because it improperly imported structural limitations from the preferred embodiment and dependent claims. There was no dispute that the term IDC connector was a commonly used term with a plain meaning. Even though the specification disclosed only one embodiment, it is improper to read limitations from a preferred embodiment into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited, e.g., via lexicography or disavowal. Because no such circumstances were present in this case, the Federal Circuit reversed.

The Federal Circuit also reversed the district court on whether there was a genuine factual dispute concerning infringement due to the parties’ differing interpretations of the terms “substantially ellipsoidal inner profile” and “generally spherical outer profile.” Both parties stipulated to definitions of the terms; nevertheless, a dispute arose over whether the entire inner profile must be substantially ellipsoidal or whether the claims can be met if a portion of the inner profile is substantially ellipsoidal. The Federal Circuit adopted the latter interpretation because the former would exclude the specification’s only disclosed embodiment. For similar reasons, the Federal Circuit also reversed the district court’s interpretation of the term “generally spherical outer profile.”

Sanctions Imposed For Fraud On Court

In MONSANTO CO. v. E.I. DU PONT DE NEMOURS & CO., Appeal No. 13-1349, the Federal Circuit affirmed the district court’s imposition of sanctions.

Monsanto granted DuPont a license to produce and sell soybeans containing an herbicide-resistant trait. The license included language restricting DuPont’s rights to stack the trait. When DuPont developed a soybean that did stack the trait, Monsanto filed suit.  During litigation, DuPont pursued contract reformation counterclaims, stating that it had always subjectively believed it had the right to stack the licensed trait. Based on evidence produced during discovery, the district court found that DuPont’s position was not “rooted in fact.” The court held that DuPont had perpetrated a fraud on the court and abused the judicial process. In response, the district court struck DuPont’s reformation defense and counterclaims and awarded attorney fees limited to fees incurred in defending against DuPont’s reformation counterclaims.

The Federal Circuit reviewed the imposition of sanctions for an abuse of discretion under Eighth Circuit law. While the Federal Circuit determined that DuPont’s conduct did not satisfy the high standard for “fraud on the court,” it held that the district court correctly found that DuPont had abused the judicial process and acted in bad faith by making affirmative factual misrepresentations. Therefore, the Federal Circuit affirmed the narrowly tailored sanctions imposed by the district court.

Online Newsgroup Post Is a Printed Publication

In SUFFOLK TECHNOLOGIES, LLC v. AOL INC., Appeal No. 13-1392, the Federal Circuit affirmed the district court’s summary judgment of anticipation based on a “printed publication” in the form of an online Usenet newsgroup post.

The Federal Circuit held that a 1995 Usenet newsgroup post qualified as a printed publication because it was directed at an audience of persons of ordinary skill in the art and was made sufficiently available. Furthermore, despite evidence of superficial alterations, testimony from the author sufficiently authenticated the post. The district court also did not abuse its discretion by excluding post-claim-construction testimony from Suffolk’s expert on the validity of the independent claim because the expert had previously testified to having no opinion on the validity of that claim.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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