Anticipate This!™ | Patent and Trademark Law Blog

Gemmy Industries Corp. v. Chrisha Creations Limited, et al.

Posted in Opinion Commentary by Jake Ward on June 25, 2006

Christmas is Too Commercialized These Days, Don't You Think?

(Fed. Cir. 2006, 05-1110)

The CAFC vacated a summary judgment of invalidity by the district court (S.D.N.Y.), based on the on-sale bar, of Gemmy's U.S. Pat. No. 6,644,833.  Gemmy and Chrisha are competitors in the business of holiday decorations.  The technology at issue is inflatable decorative holiday figures, e.g. large inflatable Santas.

The basic standard, since patents bear a presumption of validity, is that "invalidity based on the on-sale bar must be established by clear and convincing evidence."  Chrisha argued that the accused product was on sale by Gemmy more than one year prior to the application of the patent.  Gemmy argued that the accused products were incompletely developed at that time and that the burden was on Chrisha to show that the product was "ready for patenting" and "the subject of a commercial offer for sale" before the critical date.

Chrisha pointed out an affidavit of Gemmy's president (later modified by declaration), which stated that the product was on sale since before the critical date.  The court disregarded this argument, as they found that the product "offered for sale" before the critical date was not the same as the product claimed in the patent.  Additionally, the court held that evidence of a commercial offer of sale was not met by the "quote sheets" distributed by Gemmy.  As Gemmy argued, there is "not an offer for sale where the communication lacked quantities, time of delivery, place of delivery, or product specifications. . . ."

Honeywell International, Inc., et al. v. ITT Industries, Inc., et al.

Posted in Opinion Commentary by Jake Ward on June 25, 2006

The phrase "this invention" in the Written Description Limited the Scope of the Claims. 

(Fed. Cir. 2006, 05-1407)

The CAFC affirmed the district court's grant of a summary judgment of noninfringment of Honeywell's U.S. Pat. No. 5,164,879 (the "879 patent") in favor of ITT.

The 879 patent addressed the "arcing" problem associated with polymeric fuel filter housings which causes microscopic holes to form, leading to breakdowns and fuel leakage.  Honeywell claimed a system comprising an electrically conductive pathway, e.g. electrically conductive fibers, between the filter and the frame of a vehicle to prevent "arcing."  The accused product produced by ITT are quick connects for joining fuel lines to a fuel filter, said quick connects having a polymer housing interlaced with carbon fibers.

Honeywell argued that the court improperly limited the scope of the claims to the specification's preferred embodiment (a fuel filter), even thought the claim language recited a "fuel injection system component."  However, the CAFC disagreed with Honeywell that the construction was improper.  The court pointed to at least four instances where Honeywell referred to the fuel filter as "this invention" or "the present invention" in the specification.  Accordingly, "[t]he public is entitled to take the patentee at his word and the word was that the invention is a fuel filter."

The court further disregarded statements from prosecution that might suggest broader scope as being inconsistent with the written description.  "Where . . . the written edescription clearly identifies what [the] invention is, an expression by a patentee during prosecution that he intends his claims to cover more than what his specification discloses is entitled to little weight."

To add further insult to injury, the CAFC provided separate grounds for affirming the ruling of the lower court by concluding that Honeywell also disavowed carbon fiber from the scope of the claims.  In particular, the specification provided reasons why carbon fibers would not be suitable for the invention . . . effectively saying "Do not use carbon fibers."

Abbott Laboratories v. Andrx Pharmaceuticals, Inc., et al.

Posted in Opinion Commentary by Jake Ward on June 25, 2006

CAFC Majority Vacates Preliminary Injunction, with Scathing Dissent

(Fed. Cir. 2006, 05-1433

The CAFC vacated a preliminary injunction granted by the district court (N.D. Ill.), finding that there was a substantially issue raised as to the validity of each of the asserted claims relied upon by the district court for the preliminary injunction.

At issue was Abbott’s patents claiming an extended release formulation of the broad spectrum antibiotic, clarithromycin.   Abbott sued Teva for infringement of the patents upon Teva’s filing of an Abbreviated New Drug Application (ANDA) for a similar extended release form of clarithromycin.  The majority panel stated the four fact test for granting a preliminary injunction, namely that the party seeking the preliminary injunction must show:

1)      the movant has some likelihood of success on the merits of the underlying litigation;

2)      immediate irreparable harm will result if the relief is not granted;

3)      the balance of hardship s to the parties weights in the movant’s favor; and

4)      the public interest is best served by granting the injunctive relief.

The court also stated that, in accordance with eBay, Inc. v. MercExchange, the decision to grant or deny permanent injunctive relief is an act of equitable discretion by the district court, reviewable on appeal for abuse of discretion; a showing of which may be made by showing the court made a clear error of judgment in weighting relevant factors or exercised its discretion based upon an error of law or clearly erroneous findings.

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