Federal Circuit Flash Digest
By Keke Wu – Edited by Yunnan Jiang
Federal Circuit Rejects-in-part the District Court’s Claim Construction
On October 29, 2015, the U.S. Court of Appeals for the Federal Circuit ruled in two separate cases related to an Atlas patent on a protocol for controlling wireless network communications between a hub and multiple remotes, in which Atlas sued Medtronic and St. Jude Medical for patent infringement. In Atlas IP, LLC v. Medtronic, Inc., 2015-1071, 2015-1105 (Fed. Cir. Oct. 29, 2015), the Federal Circuit affirmed-in-part, reversed-in-part, and remanded the district court’s summary judgments. The Court first affirmed the district court’s non-infringement finding, where the dispute lies in how to construe the term “establish”. Rejecting Atlas’s argument that “establish” should be construed according to its “plain meaning,” the Court noted that, in the context of the particular patent, a more proper definition is “set up (an organization, system, or set of rules) on a firm or permanent basis.” The Court then reversed the district court’s finding of no anticipation and no obviousness on the ground of the incorrect claim construction. In Atlas IP, LLC v. St. Jude Med., Inc., 2015-1190 (Fed. Cir. Oct. 29, 2015), the Federal Circuit vacated and remanded the district court’s decision, which stated that the term “in advance” required a communication be sent before the communication cycle began. The Federal Circuit instead concluded that nothing in the claim language required the communication to be sent before the start of the communication cycle, and that other claims and the specification suggested information may be sent during the communication cycle.
No Jurisdiction to Claim Reputational Harm after Settlement
In Tesco Corp. v. National Oilwell Varco, L.P., 2015-1041 (Fed. Cir. Oct. 30, 2015), the United States Court of Appeals for the Federal Circuit held that it possessed no jurisdiction over attorneys’ claim of reputational harm from the district court judge’s critical remarks after the parties reached a settlement. Tesco Corporation and its attorneys filed the appeal from a decision of the United States District Court for the Southern District of Texas dismissing Tesco’s patent infringement suit with prejudice pursuant to the court’s inherent authority to sanction. At trial, Tesco’s attorneys made a representation to the court that later discovered to be false. The district court found that the representation justified a finding of bad faith and sanctioned Tesco by dismissing its case with prejudice. In the order, it called Tesco’s attorneys’ conduct “troubling.” During the pendency of the appeal, Tesco and defendant-appellees entered into a settlement resolving all outstanding issues. Tesco’s attorneys, however, continued to appeal the district court judge’s order alleging reputational harm. Because the settlement makes it unnecessary to decide whether the sanctions order can be considered a formal reprimand, the Federal Circuit held that Tesco no long had standing and dismissed the appeal. The Court explained that the settlement agreement ended the dispute and none of the parties had any interest in the underlying order, except for Tesco’s attorneys for reputational reasons.
Federal Circuit Affirms-in-part PTAB in Belden vs. Berk-Tek
In Belden Inc. v. Berk-Tek LLC, 2014-1575, -1576 (Fed. Cir. Nov. 5, 2015), the United States Court of Appeals for the Federal Circuit affirmed-in-part and reversed-in-part a inter partes review decision made by the Patent and Trademark Office’s Patent Trial and Appeal Board. The decision concerns U.S. Patent No. 6,074,503 owned by Belden Inc., which claims a method for making a communications cable. The Federal Circuit affirmed the Board’s decision to reject claims 1–4 of the ’503 patent. The Court stated that the Board was entitled to rely on its own reading of Japanese Patent No. 19910 to find that a skilled artisan would have understood the importance of aligning the core and conductors and the connection between achieving such alignment and preventing the core from twisting at the aligning die. The Federal Circuit, however, reversed the Board’s upholding of claims 5 and 6. In reaching its conclusion, the Federal Circuit reasoned the Board’s disregard of the insulation-independent alignment teaching of Japanese Patent No. 19910 violated the principle that “[a] reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect.” The Board erred in determining that Berk-Tek had not proven the obviousness of the methods of claims 5 and 6 of the ’503 patent by a preponderance of the evidence.