IP News

Federal Circuit Affirms Blender Verdict

On Sept. 6, 2012, the Federal Circuit panel of Judges Pauline Newman, Alan D. Lourie and Sharon Prost affirmed a Utah district judge's ruling upholding a jury's finding that two patents directed to blender technology were valid and were willfully infringed. In K-Tec, Inc. v. Vita-Mix Corporation, No. 2011-1244, K-Tec asserted two patents against Vita-Mix directed to five-sided blender containers, which are designed to create a vortex of liquid during blending. Slip Op. at 5. A jury awarded K-Tec $11 million in reasonable royalties and lost profits damages.

Vita-Mix appealed, first arguing that the construction of the term “truncated wall” was improper. Slip Op. at 13. Vita-Mix also appealed the district court's decision that two prior art references were not analogous, arguing that a re-examination of one of the patents-in-suit had found those two references to be analogous art. Id. at 14. The Federal Circuit disagreed, holding that “Vita-Mix's expert's report on invalidity failed to raise a genuine issue of material fact because, as the district court correctly concluded, the report was 'silent on the question of why [the inventor] would have looked to non-blending containers to discover the commonplace designs' depicted in [the references].” Slip Op. at 16.

Vita-Mix also appealed the lower court's finding of willfulness, arguing that “because its above-described noninfringement and invalidity positions were reasonable, K-Tec failed to establish objective recklessness as a matter of law.” Slip Op. at 21. The Federal Circuit again disagreed, holding that “K-Tec presented evidence that, in designing the XP product, Vita-Mix started with the MP container ' a direct copy of K-Tec's five-sided jar ' and made only a trivial change.” Slip Op. at 22. Therefore, the Federal Circuit held that the district court did not err in denying Vita-Mix's motion for judgment as a matter of law on willful infringement.

Federal Circuit Delivers Mixed Results in Zegerid ANDA Appeal

On Sept. 4, 2012, the Federal Circuit panel of Judges Randall R. Rader, Pauline Newman and Kimberly A. Moore delivered a per curiam opinion in Santarus, Inc. v. Par Pharmaceutical, Inc., No. 2010-1360. The district court had held that all of Santarus' asserted claims were infringed, but were invalid as obvious. Slip Op. at 3. The district court also held that several claims were invalid for failing to satisfy the written description requirement. Id. The ANDA case involved the proton pump inhibitor Zegerid', which is used to treat various stomach acid disorders. Santarus asserted 36 claims from five separate patents to protect its product monopoly in the litigation. The Federal Circuit panel held that the district court erred in invalidating claims from two of the patents directed toward the administration of Zegerid. “We hold that the district court erred by concluding that claims directed to [ ] conventional dosage forms would have been obvious.” Slip Op. at 20. Aside from these claims, the Federal Circuit upheld the district court's rulings that the remaining claims were obvious. The panel also reversed the district court's holding that several claims were invalid for failure to satisfy the written description requirement, noting that the use of negative limitations in claims is proper if the specification expressly lists the disadvantage of using that limitation. Id. at 12-13.

Judge Newman filed a separate opinion, concurring in part and dissenting in part. Judge Newman argued against the additional requirement that the specification must “describe a reason” for the claim limitation in order to satisfy the written description requirement. Slip Op. at 2 (Newman, J., concurring in part and dissenting in part). Judge Newman also would reverse the district court's obviousness determination of several other claims, holding that “although the expert witnesses for both sides agreed that it was uniformly understood that a protective enteric coating is essential for oral dosage, my colleagues find it obvious to omit the protective enteric coating.” Id. at 10.

HTC Dodges Wireless Patents in Illinois

In Intellect Wireless, Inc. v. HTC Corporation, No. 09-02945 (N.D. Ill), Judge William T. Hart ruled that Intellect Wireless' patents were unenforceable due to inequitable conduct. The court found that the inventor of the patents submitted “false Rule 131 declarations to the United States Patent and Trademark Office in order to establish earlier conception dates for patents cited as prior art against his patent applications.” Slip Op. at 2. The 131 declarations filed during prosecution stated that the invention had been actually reduced to practice, and during discovery the inventor testified that the invention had never been reduced to practice. Id. at 29. The court concluded that the declarations contained false statements, the false statements were material and were never withdrawn despite ample chances to do so, and that clear and convincing evidence strongly supported an intent to deceive. Id. at 45. All claims of the asserted patents were declared invalid based on inequitable conduct.

Howard J. Shire is a partner and Joseph Mercadante is an associate in the New York office of Kenyon & Kenyon LLP.

Federal Circuit Affirms Blender Verdict

On Sept. 6, 2012, the Federal Circuit panel of Judges Pauline Newman, Alan D. Lourie and Sharon Prost affirmed a Utah district judge's ruling upholding a jury's finding that two patents directed to blender technology were valid and were willfully infringed. In K-Tec, Inc. v. Vita-Mix Corporation, No. 2011-1244, K-Tec asserted two patents against Vita-Mix directed to five-sided blender containers, which are designed to create a vortex of liquid during blending. Slip Op. at 5. A jury awarded K-Tec $11 million in reasonable royalties and lost profits damages.

Vita-Mix appealed, first arguing that the construction of the term “truncated wall” was improper. Slip Op. at 13. Vita-Mix also appealed the district court's decision that two prior art references were not analogous, arguing that a re-examination of one of the patents-in-suit had found those two references to be analogous art. Id. at 14. The Federal Circuit disagreed, holding that “Vita-Mix's expert's report on invalidity failed to raise a genuine issue of material fact because, as the district court correctly concluded, the report was 'silent on the question of why [the inventor] would have looked to non-blending containers to discover the commonplace designs' depicted in [the references].” Slip Op. at 16.

Vita-Mix also appealed the lower court's finding of willfulness, arguing that “because its above-described noninfringement and invalidity positions were reasonable, K-Tec failed to establish objective recklessness as a matter of law.” Slip Op. at 21. The Federal Circuit again disagreed, holding that “K-Tec presented evidence that, in designing the XP product, Vita-Mix started with the MP container ' a direct copy of K-Tec's five-sided jar ' and made only a trivial change.” Slip Op. at 22. Therefore, the Federal Circuit held that the district court did not err in denying Vita-Mix's motion for judgment as a matter of law on willful infringement.

Federal Circuit Delivers Mixed Results in Zegerid ANDA Appeal

On Sept. 4, 2012, the Federal Circuit panel of Judges Randall R. Rader, Pauline Newman and Kimberly A. Moore delivered a per curiam opinion in Santarus, Inc. v. Par Pharmaceutical, Inc., No. 2010-1360. The district court had held that all of Santarus' asserted claims were infringed, but were invalid as obvious. Slip Op. at 3. The district court also held that several claims were invalid for failing to satisfy the written description requirement. Id. The ANDA case involved the proton pump inhibitor Zegerid', which is used to treat various stomach acid disorders. Santarus asserted 36 claims from five separate patents to protect its product monopoly in the litigation. The Federal Circuit panel held that the district court erred in invalidating claims from two of the patents directed toward the administration of Zegerid. “We hold that the district court erred by concluding that claims directed to [ ] conventional dosage forms would have been obvious.” Slip Op. at 20. Aside from these claims, the Federal Circuit upheld the district court's rulings that the remaining claims were obvious. The panel also reversed the district court's holding that several claims were invalid for failure to satisfy the written description requirement, noting that the use of negative limitations in claims is proper if the specification expressly lists the disadvantage of using that limitation. Id. at 12-13.

Judge Newman filed a separate opinion, concurring in part and dissenting in part. Judge Newman argued against the additional requirement that the specification must “describe a reason” for the claim limitation in order to satisfy the written description requirement. Slip Op. at 2 (Newman, J., concurring in part and dissenting in part). Judge Newman also would reverse the district court's obviousness determination of several other claims, holding that “although the expert witnesses for both sides agreed that it was uniformly understood that a protective enteric coating is essential for oral dosage, my colleagues find it obvious to omit the protective enteric coating.” Id. at 10.

HTC Dodges Wireless Patents in Illinois

In Intellect Wireless, Inc. v. HTC Corporation, No. 09-02945 (N.D. Ill), Judge William T. Hart ruled that Intellect Wireless' patents were unenforceable due to inequitable conduct. The court found that the inventor of the patents submitted “false Rule 131 declarations to the United States Patent and Trademark Office in order to establish earlier conception dates for patents cited as prior art against his patent applications.” Slip Op. at 2. The 131 declarations filed during prosecution stated that the invention had been actually reduced to practice, and during discovery the inventor testified that the invention had never been reduced to practice. Id. at 29. The court concluded that the declarations contained false statements, the false statements were material and were never withdrawn despite ample chances to do so, and that clear and convincing evidence strongly supported an intent to deceive. Id. at 45. All claims of the asserted patents were declared invalid based on inequitable conduct.

Howard J. Shire is a partner and Joseph Mercadante is an associate in the New York office of Kenyon & Kenyon LLP.