We will be discussing two recent, relevant opinions in our weekly SoCal IP Institute meeting on Monday, April 18, 2011.  The first case is a further refinement of the on-going development of split infringement jurisprudence. The second case deals with written description and the propriety of summary judgment of anticipation.  A brief synopsis of the cases is presented below.

McKesson Technologies Inc. v. Epic Systems Corp., 2010-1291 (Fed. Cir. April 12, 2011) (attached).  In this case, McKesson appealed the grant of Epic’s summary judgment motion of noninfringement.  The district court granted Epic’s motion because McKesson was unable to prove that a single entity performed all of the steps of the asserted claims.  The Federal Circuit affirmed.

The patent is generally directed to a method of electronic communication between healthcare providers.  The claims required that various steps be performed, some of which by different parties.  McKesson was unable to demonstrate that all steps were performed by a single entity or by two entities with one of the entities under the control of the other.  In view of BMC, Muniauction and Akamai, the Federal Circuit agreed that the case was suitable for summary judgment where no direct infringement by a single entity could be shown.

One interesting note is that each judge filed an opinion.  Linn wrote the majority opinion.  Judge Bryson wrote to suggest that BMC, Muniauction and Akamai may merit reconsideration en banc.  Judge Newman suggested that despite whether or not a single entity was infringing, the party inducing infringement in this case, the party selling the software that enables two parties to infringe, should be liable for induced infringement regardless of the so-called “single entity” rule.

Crown Packing Technology, Inc. v. Ball Metal Beverage Container Corp., 2010-1020 (Fed. Cir. April 1, 2011) (attached). Crown obtained patent rights on two improvements that help to reduce metal waste in the manufacture of metal beverage containers and sued Ball to enforce those patents.  Ball asserted that the two patents, sharing one specification, failed to provide sufficient written description for the asserted claims and that the claims were anticipated by a Japanese reference.  The district court granted summary judgment on both issues.

On appeal, the Federal Circuit reversed finding that the written description was sufficient to support driving a chuck on either the inside or outside of a support band near the base of the can.  The specification showed only using one on the outside of the can, the claims covered both inside and outside.  The Federal circuit agreed with Crown.  Second, the Federal Circuit reversed the finding of anticipation primarily on the basis that there was a material dispute as to the weight and reliability of testimony provided by two experts.  In those situations, summary judgment is almost never appropriate.

All are invited to join us in our discussion of these cases during the SoCal IP Institute meeting on Monday, April 18, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.