Plaintiffs’ Motions for Summary Judgment Granted

Emory Univ. et al. v. Nova Biogenetics, Inc., et al., Case No. 1:06-cv-00141 (N.D. Ga. July 15, 2008) (Thrash, Jr., J.)

Judge Thrash granted (1) Plaintiffs’ motion for summary judgment on Defendant Nova Biogenetics, Inc.’s (Nova’s) counterclaims of invalidity and unenforceability and (2) Plaintiffs' motion for summary judgment that Defendant Nova infringed the patents-in-suit. Nova has had no counsel of record since its attorney withdrew from the case in January 2007, did not file any invalidity contentions or respond to Plaintiffs' infringement contentions under the Court’s Local Patent Rules, and did not respond to Plaintiffs' summary judgment motions. Finding no question of material fact as to the validity, enforceability, and infringement of the patents, the Court granted Plaintiffs' motions and entered a permanent injunction against the Defendant.

New Northern District of Georgia Patent Cases

• Data:)Comm Elec., Inc. v. Elec. Custom Distrib., Inc., Case No. 1:08-cv-02630 (N.D. Ga. Aug. 15, 2008) (Batten, J.) - Patent Infringement Suit Involving U.S. Patent No. 7,390,964 (Wall Plate with Integral Nose for Electrical Cable). Plaintiff is represented by Thomas Kayden Horstemeyer & Risley of Atlanta.
• Igbinadolor v. TiVo Inc., Sony Corp., Philips Magnavox/Philips Elec., Clarion Corp. of Am., & JVC Am, Case No. 1:08-cv-02580 (N.D. Ga. Aug. 12, 2008) (Story, J.) - Patent Infringement Suit Involving U.S. Patent No. 6,799,196 (On-Demand Data Streaming Parceling). Plaintiff is proceeding pro se.
• Southwire Co. v. Cerro Wire Inc., Case No. 3:08-cv-00092 (N.D. Ga. Aug. 12, 2008) (Camp, J.) - Patent Infringement Suit Involving U.S. Patent No. 7,411,129 (Electrical Cable Having Surface With Reduced Coefficient of Friction). Plaintiff Southwire Company is represented by Alston & Bird, LLP of Atlanta.

Claim Construction Order

CBT Flint Partners, LLC v. Return Path, Inc. et al., Case No. 1:07-cv-01822 (N.D. Ga. July 10, 2008) (Thrash, Jr., J.)

Judge Thrash construed the claims of two patents relating to a method and system for hindering the proliferation of unsolicited email messages (i.e., “spam”).

Computer Implemented Means-Plus-Function Limitation Must be Supported in Specification by Specific Algorithm

Notably, the Court found that one of the asserted claims was invalid for indefiniteness and thus not amenable to claim construction. In particular, the Court found that the patent specification failed to disclose sufficient structure to support the following means-plus-function limitation: “means . . . for detecting an indication or an origin of an electronic mail communication . . . and for comparing the indication to an authorization list.” According to the Court, the structure identified in the specification that performs these claimed functions was “a computer or multiple computers in communication with each other.”

The Federal Circuit has established that the corresponding structure of a computer-implemented means-plus-function term is the algorithm for performing the function that is identified in the specification and equivalents. See WMS Gaming, Inc. v Int’l Game Tech., 184 F.3d 1339 (Fed. Cir. 1999) and Harris Corp. v. Ericsson Inc., 417 F.3d 1241 (Fed. Cir. 2005). More recently, the Federal Circuit stated that “this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.” See Aristocrat Techs. Australia v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (affirming a finding of invalidity for failure to disclose any structure, i.e., any algorithm, to support a software means-plus-function claim).

Quoting extensively from Aristocrat, Judge Trash concluded that in order to claim the recited means “for detecting” and “for comparing,” the Plaintiff “must have disclosed the algorithm.” Finding that the specification disclosed no algorithm, but only general purpose computers as corresponding structure, the Court held that the asserted claim was invalid for indefiniteness.

Motion for Summary Judgment of Invalidity Granted Due to Indefiniteness

CBT Flint Partners, LLC v. Return Path, Inc. et al., Case No. 1:07-cv-01822 (N.D. Ga. July 11, 2008) (Thrash, Jr., J.)

Claim 13 of U.S. Patent No. 6,587,550 includes a drafting error. The claim recites, in relevant part, that “the computer [is] programmed to detect analyze the electronic mail communication sent” (emphasis added). Defendants’ filed a motion for summary judgment of invalidity, arguing that the claim is indefinite. In particular, the Defendants contended that the claim is ambiguous because there are five reasonable ways to correct the error: (1) delete the word “detect,” (2) delete the word “analyze,” (3) add the word “and” between the words, (4) add the word “or” between the word, and (5) add the phrase “and/or” between the words. The Plaintiff argued that inserting the word “and” between the words “detect analyze” is the only reasonable correction.

District Court May Correct Drafting Error in Some Circumstances: The parties did not dispute that the claim has a drafting error. Thus, the question for the Court was whether it could correct the error. The Federal Circuit has explained that a district court can correct an error in a patent claim if “(1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo Indus., L.P., v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003).

But Not Where the Court Must Guess at the Claim's Intended Meaning: Citing deposition testimony of a co-inventor who stated that “I think that maybe I meant detect and analyze or I meant detect and meant to delete analyze or I meant analyze and meant to delete detect,” Judge Thrash concluded that the Court had no authority to correct the error and granted the Defendants’ motion:

If the inventor and lawyer who drafted the patent is left to guess at what he meant, the Court is certainly in no better position. The appropriate correction is subject to reasonable debate based on consideration of the claim language and the specification. The prosecution history is silent as to what was intended. Following the clear mandate of Novo Industries, this Court is not authorized to correct the drafting error. Therefore, claim 13 is invalid for indefiniteness in its present form.

New Northern District of Georgia Patent Cases

• July 31, 2008: Wisefame International Ltd. and IFM International, Inc. v. FKA Distributing Co. (d/b/a HoMedics-U.S.A, Inc.), Case No. 1:08-cv-02468 (N.D. Ga.) (Duffey, Jr., J.) - Declaratory Judgment Suit Involving U.S. Patent No. 7,128,721 (Portable Body Massager). Plaintiffs are represented by Morris Manning & Martin of Atlanta. This case is related to a previously-filed suit among the same parties wherein the Plaintiffs seek a correction of inventorship for the ‘721 patent. (See Wisefame International Ltd. and IFM International Ltd. v. FKA Distributing Co. (d/b/a Homedics-USA, Inc.), Case No. 1:08-cv-00641 (N.D. Ga. filed Feb. 26, 2008) (Duffey, Jr., J.)).

New Northern District of Georgia Patent Cases

• July 29, 2008: Black & Decker Inc. and Black & Decker (U.S.) Inc. v. King Group Canada, King Group USA, and Zhejiang YongKang Haomai Tool Co., Ltd. (d/b/a Heroic Tools and Haomai Tools), Case No. 1:08-cv-02435 (N.D. Ga.) (Martin, J.) - Patent Infringement Suit Involving U.S. Patent Nos. 5,545,080 (Motorized Sander) and 5,690,545 (Motorized Rotary Tool). Plaintiffs are represented by Swift Currie McGhee & Hiers of Atlanta and Niro, Scavone, Haller, & Niro of Chicago.

New Northern District of Georgia Patent Cases

• July, 25 2008: Data:)Comm Electronics, Inc. v. Arlington Industries, Inc., Case No. 1:08-cv-02412 (N.D. Ga.) (Thrash, Jr., J.) - Patent Infringement Suit Involving U.S. Patent No. 7,390,964 (Wall Plate with Integral Nose for Electrical Cable). Plaintiff is represented by Thomas Kayden Horstemeyer & Risley of Atlanta.

Plaintiff’s Motion for Partial Summary Judgment on § 102(f) and § 102(g) Defenses Denied

Chemfree Corp. v. J. Walter, Inc. et al., Case No. 1:04-cv-03711 (N.D. Ga. June 10, 2008) (Camp., J.) (Part III)

(Read Part I discussing Judge Camp’s Order on inequitable conduct and Rule 11 and Part II discussing his Order on the ethical considerations of simultaneously representing a party and a fact witness.)

This case involves five patents-in-suit relating to environmentally friendly washers for mechanical parts. Defendants asserted that the patents are invalid under Section 102(f) and Section 102(g). Section 102(f) relates to improper inventorship and prohibits a person from obtaining a patent if he did not invent the claimed subject matter, but instead derived the invention from another. Section 102(g) relates to prior invention in this country by another who had not abandoned, suppressed, or concealed his invention. These sections are relied on relatively infrequently by alleged infringers because in most cases, a prior invention is disclosed in a publication or through public use and is asserted under Sections 102(a) or (b).

Sufficient Evidence of Prior Conception: Plaintiff argued that it was entitled to judgment as a matter of law on Defendants’ 102(f) and 102(g) claims. Upon review of the facts, the Court concluded that genuine issues of material fact remained as to each defense. Specifically, the Court found evidence suggesting that one of the named inventors of the patents-in-suit conceived of the entire claimed invention (meaning he should have been named as the sole inventor) and communicated this concept to the Plaintiff prior to the filing of the patents-in-suit. This evidence, which consisted of the inventor’s testimony and various schematics and descriptions that pre-dated the applications for the patents-in-suit, was deemed sufficient for Defendants’ 102(f) and 102(g) defenses to survive summary judgment.

Local Patent Rules Interpreted: In rejecting Plaintiff’s procedural challenge to the Defendants’ 102(f) invalidity contentions, Judge Camp interpreted the requirements of Local Patent Rule 4.3.

• LPR 4.3(a)(1)(ii) provides that a party must identify the prior art relied on under Section 102(f). The Court held that Defendants met this requirement by identifying a potential witness and referring to supporting exhibits that were alleged to “describe the circumstances under which the inventions of the patents-in-suit were derived.”


• LPR 4.3(a)(3) requires a party to identify any combination of prior art references and the motivation to combine the references “[i]f the disclosing party contends that a combination of items of prior art makes a claim obvious.” The Court held that this requirement applies only to claims of obviousness, not to claims of derivation under Section 102(f).


• LPR 4.3(a)(4) requires a party to provide a chart identifying where specifically in each alleged item of prior art each element of each asserted claim is found. The Court held that this requirement did not apply to the Defendants’ derivation claim because the Defendant was relying on the activities of an individual, not on a specific prior art reference. (The implication is that the requirement would apply to a derivation claim based on prior art references.)

New Northern District of Georgia Patent Cases

• July, 18 2008: Simply Orange Juice Co. & The Coca-Cola Co. v. Resilux America, LLC & Silver Springs Citrus, Inc., Case No. 1:08-cv-02333 (N.D. Ga.) (Carnes, J.) - Design Patent Infringement Suit Involving U.S. Patent Nos. D456,272 (Bottle with Closure) and D458,145 (Bottle). Plaintiffs are represented by Thomas Kennedy Sampson & Patterson of Atlanta.

The Ethics of Simultaneously Representing a Party and a Fact Witness

Chemfree Corp. v. J. Walter, Inc. et al., Case No. 1:04-cv-03711 (N.D. Ga. June 10, 2008) (Camp., J.) (Part II)

(Read Part I discussing Judge Camp’s Order on inequitable conduct and Rule 11.)

In an Order that should serve as a warning to similarly-situated lawyers, Judge Camp responded to a request to investigate possible attorney misconduct stemming from Defendant’s counsel’s simultaneous representation of the Defendants and several fact witnesses. The Court ultimately found insufficient evidence to justify further inquiry, but reminded the attorneys that “bare adherence to the minimum requirements of the Georgia Rules of Professional Conduct is not the hallmark of legal professionalism.”

In support of a prior use defense, Defendants submitted sworn declarations of several fact witnesses. Plaintiff’s counsel sought to depose the witnesses. Three of the witnesses contacted Plaintiff’s counsel about their scheduled depositions, informed Plaintiff’s counsel that they were not represented by counsel, and consented to participate in ex parte interviews with Plaintiff’s counsel. After Plaintiff’s counsel conducted a second interview with one of the witnesses (who had been hired by Defendants as a non-testifying expert consultant prior to submitting his declaration), Defendants’ counsel sent Plaintiff’s counsel a letter indicating that the three witnesses were now represented by Defendants’ counsel. The letter also requested that Plaintiffs’ counsel refrain from any further ex parte communications with the witnesses.

Georgia Rules of Professional Conduct: Plaintiff contended that the representation was a sham to obstruct Plaintiff’s access to the witnesses, and argued that Defendants’ counsel’s simultaneous representation of Defendants and the three fact witnesses violated Rule 1.7 (prohibits representing client if it will materially and adversely affect the representation of another client), Rule 3.4 (prohibits unlawfully obstructing another party’s access to evidence), and Rule 7.3 (imposes constraints on lawyer solicitation) of the Georgia Rules of Professional Conduct.

• Representation of Previously Retained Expert was Proper: The Court quickly disposed of Plaintiff’s allegations with respect to Defendants’ expert consultant. The consultant had been formally retained well before Plaintiff’s counsel attempted to speak ex parte with him. The Court concluded that it was proper for Defendants’ counsel to request Plaintiff’s counsel not to interview Defendants’ consultant outside the environment of a formal deposition.
• There Can Be No Conflict of Interests: With regard to Rule 1.7, the Court noted that it is not facially improper to simultaneously represent a party in a case and also to represent and non-adversarial, fact witness. The Court acknowledged that the “decision to simultaneously represent a third party witness is a strategic method to use privilege to lawfully obstruct some limited discovery.” Such simultaneous representation is improper, however, if a conflict of interest exists. Here, the Court found that “[a]lthough [Defendants’ counsel’s] conduct with respect to these Declarants raises professionalism concerns, no information indicates a conflict of interest existed.” Because there was no showing that the interests of either witness was adverse to the interests of the Defendant, the Court declined to inquire further.
• Tactical Advantage Gained did not Amount to Intentional Obstruction: Looking next to Rule 3.4 (obstruction), the Court found no evidence that Defendants’ counsel intentionally attempted to deprive Plaintiff of access to the witnesses or their evidence. Although Defendant may have gained a tactical advantage from the representation, Plaintiff was not prevented from examining the witnesses under oath. The Court noted, however, that the representation would factor into the witnesses’ credibility.
• Initiating the Question of Representation Would Have Been Unethical: Rule 7.3 prohibits a lawyer from soliciting employment “through direct personal contact or through live telephone contact, with a non-lawyer who has not sought advice regarding employment of a lawyer.” (Emphasis added.) In what the Court described as an “ancient, but telling” Informal Opinion from 1965, the ABA Committee on Professional Ethics held that it is not proper for an attorney to invite an independent witness to engage him to represent the witness during deposition. Here, the record was unclear as to whether Defendant’s counsel initiated the question of representing the witnesses as clients. Because Plaintiff offered no evidence that Defendant’s counsel first raised the issue, the Court deemed the record insufficient to justify further inquiry.

Judge Camp concluded his Order with some advice for attorneys that may face this situation:

A simple way for [Defendants’ counsel] to have avoided any appearance of unethical conduct would have been to refer the Declarants to alternative counsel when the issue of representation for the depositions was raised. Such a referral would have saved the time and resources of the Court and counsel for both parties, and it would have upheld the high ethical standards of the profession.

Motion for Rule 11 Sanctions Granted Based on Finding that Inequitable Conduct Allegations were Frivolous

Chemfree Corp. v. J. Walter, Inc. et al., Case No. 1:04-cv-03711 (N.D. Ga. June 10, 2008) (Camp., J.) (Part I)

Judge Camp granted Plaintiff’s Motion for Partial Summary Judgment on the Defendants’ claims of inequitable conduct. Finding “clear evidence” that certain of the Defendants’ inequitable conduct allegations were frivolous, the Court also granted Plaintiff’s Motion for Rule 11 sanctions.

Inequitable Conduct: Defendants’ inequitable conduct claims were based on Plaintiff’s alleged failure to disclose (1) information about an inventorship dispute over the claimed technology, and (2) a number of prior art references.

• PTO was Aware of Inventorship Dispute: The dispute arose when one of the inventors named in a parent application refused to sign his declaration because he believed he was the sole inventor. At that time, Plaintiff filed a petition, which was granted by the PTO, to prosecute the parent application on behalf of the refusing inventor. During prosecution of the patents-in-suit, the refusing inventor participated in litigation over the rights to the claimed technology and filed his own patent application for the purpose of provoking an interference. The Court found no evidence that the Plaintiff intentionally withheld any relevant information, and no basis to infer an intent to deceive because there was evidence that the PTO was aware of the refusing inventor’s refusal to sign.
• PTO was Asked to Consider Prior Art: The Defendants also asserted that Plaintiff’s predecessor-in-interest failed to disclose 20 references during prosecution of one of the patents-in-suit (“the ‘226 patent”), which issued from a series of continuation applications. The predecessor did, however, disclose 15 of the references during prosecution of the priority applications and filed an information disclosure statement during prosecution of the ‘226 patent asking the PTO to consider all art of record in the prior applications. The Court held that the predecessor’s attempt to incorporate the prior art by reference negated an inference of intent to deceive.
• Prior Art was Admittedly Cumulative: In addition, the Defendants asserted that Plaintiff failed to disclose a particular foreign patent reference during prosecution of one of the patent-in-suit (“the ‘125 patent”). The Plaintiff did, however, disclose a related foreign patent reference during prosecution of each of the patents-in-suit. Further, the Defendant had admitted that the related foreign reference was cumulative of the allegedly withheld reference. On this basis, the Court held that the Defendants could not show an intent to deceive or the requisite materiality.

Rule 11: Plaintiff argued that the Defendants allegations of inequitable conduct were frivolous and warranted Rule 11 sanctions. The Court agreed with respect to several of the claims. Specifically, the Court concluded that no reasonable attorney, after learning that Plaintiff’s predecessor-in-interest attempted to incorporate the 15 references by reference during prosecution of the ‘226 patent, would continue to assert claims of inequitable conduct based on those 15 references. Further, the Court deemed it unreasonable to assert inequitable conduct based on the foreign reference known to Defendants’ counsel to be cumulative of prior art already cited to the PTO.

As a result, the Court directed Defendants’ counsel to pay (1) Plaintiff’s reasonable attorneys’ fees and costs incurred in defending against the claims of inequitable conduct based on the 15 references and the foreign reference and (2) a penalty of $3,000 into the registry of the Court.

New Northern District of Georgia Patent Cases

• July, 8, 2008: Steven B. Studdard v. Nautilus, Inc., Case No. 1:08-cv-2207 (N.D. Ga.) (Camp, J.) - Patent Infringement Suit Involving U.S. Patent No. 7,276,018 (Exercise Equipment). Plaintiff Studdard is represented by Manning Lilenfeld LLP of Atlanta.

New Northern District of Georgia Patent Cases

• June 24, 2008: Todd Muirhead v. Bargain Crusader, Inc. & Randy Coppernoll, Case No. 1:08-cv-02102 (N.D. Ga) (Duffey, J.) - Patent Infringement Suit Involving U.S. Patent Nos. 6,500,214 and 6,699,803 (Camouflage Covering and Method of Manufacture). Plaintiff Muirhead is represented by Myers & Kaplan of Atlanta.

• June 24, 2008: Dynamic Depth, Inc. v. Fileworks, Inc., Case No. 1:08-cv-2108 (N.D. Ga.) (Pannell, J.) - Patent Infringement Suit Involving U.S. Patent No. 5,461,488 (Computerized Facsimile System and Method). Plaintiff Dynamic Depth, Inc. is represented by Thomas, Kayden, Horstemeyer & Risley, LLP of Atlanta.

• June 26, 2008: CCH Associates, LLC, Cardiovascular Ventures, Inc., & Dr. Christopher U. Cates v. Datascope Corp., Case No. 1:08-cv-02126 (N.D. Ga.) (Duffey, J.) - Patent Infringement Suit Involving U.S. Patent Nos. 6,056,768; 6,162,240; and 6,699,261 (Blood Vessel Sealing System). Plaintiffs are represented by King & Spalding of Atlanta.

• June 30, 2008: Water Visions Int’l v. Kenneth Hughes, Case No. 1:08-cv-2169 (N.D. Ga.) (Evans, J.) - Patent Infringement Suit Involving U.S. Patent No. 7,201,841 (Composite Materials for Fluid Treatment). Plaintiff Water Visions is represented by RobinsLaw LLC of Atlanta.

Claim Construction Order

Calmedica LLC v. Best Vascular, Inc., et al., Case No. 1:04-cv-02646 (N.D. Ga. June 18, 2008) (Story, J.)

Judge Story construed the claims of two patents relating to a method and apparatus for preventing restenosis (i.e., the subsequent narrowing) of a blood vessel after angioplasty, a procedure for widening a region of a blood vessel that has been narrowed (stenosed) by the buildup of atherosclerotic plaque.

The Court construed a number of disputed terms and phrases. Notably, as he has done in at least one previous case, Judge Story adopted his own constructions for a couple of the disputed terms. Specifically, the Court rejected both parties’ proposed constructions of the claim phrase “wherein the radioactive dose is incorporated into a liquid for delivery” in favor of its own, and found that the appropriate construction of the claim term “operatively connected” was a combination of the parties’ proposed constructions.

Also of interest, the Court held that the term “positioner” is a means-plus-function clause despite the presumption against means-plus-function treatment because the word “means” was not used. In so holding, the Court agreed with the Defendant that “positioner” is a functional word that conveys no structure and has no well-understood structural meaning in the art. The term was not found in any of the prior art of record or in any of the inventor’s or Plaintiff’s other patents. Further, the Court rejected the Plaintiff’s argument that the prosecution history supported a broader construction. The applicant had replaced the term “positioning means” with the term “positioner” during prosecution “for improved clarity of the claims.” The Court found that because this amendment was made after the claims had been allowed over the prior art, it was not intended to change the scope of the claim and remove the clause from the purview of means-plus-function treatment.

New Northern District of Georgia Patent Cases

• June 17, 2008: Dynamic Depth, Inc. v. Alt-N-Technologies, Ltd., Case No. 1:08-cv-02031 (N.D. Ga.) (Pannell, J.) - Patent Infringement Suit Involving U.S. Patent No. 5,461,488 (Computerized Facsimile System and Method). Plaintiff Dynamic Depth, Inc. is represented by Thomas, Kayden, Horstemeyer & Risley, LLP of Atlanta.