SoCal IP Institute
Please join us for the SoCal IP Institute meeting, Monday, February 7 at Noon. 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.
We will be discussing the following cases:
Arlington Indus. V. Bridgeport Fittings, No. 10-1025 (Fed. Cir. Jan. 20, 2011) (case attached) Arlington is the owner of two patents related to electrical junction box fittings. The term, “spring metal adaptor” was construed differently in two separate cases involving different Bridgeport products. In particular, the later case required the “spring steel adaptor” to include a “split” in its ring. The cases were appealed to the Federal Circuit. The Court found that the inclusion of the “split” limitation in the second case, while shown in the specification, was not a limitation of the “spring metal adaptor”. The case is a rather typical analysis of a claim construction issue. Judge Lourie’s concurrence in part and dissent in part is interesting as a discussion of the difficulty of applying the claim construction process to a later infringer not envisioned at the time the application was prepared.
Tokai v. Easton Enterprises, No. 10-1057, -1116 (Fed. Cir. January 31, 2010) (case attached) Tokai sued Easton as infringing three of its patents related to utility safety lighters. After claim construction, Tokai moved for summary judgment on Easton’s claims of invalidity and obviousness. Easton filed a cross-motion for summary judgment of obviousness. Tokai attempted to incorporate two expert declarations that the district court excluded because Easton had not had an opportunity to cross-examine the experts. The court then granted Easton’s motion for summary judgment of obviousness.
The Federal Circuit affirmed the district court’s exclusion of the expert declarations. The Federal Circuit then reviewed the district court’s application of the Graham factors and found no errors. In short, there was no error with regard to the scope and content of the prior art, the district courts analysis of the differences between the prior art at the asserted claims, the level of skill in the art under Graham or secondary indicia of non-obviousness.
The Federal Circuit then evaluated the obviousness of the claims under KSR. The Federal Circuit centered on three undisputed facts in its analysis: the state of the art, the simplicity and availability of components and the explicit need for safer utility lighters. The Federal Circuit affirmed that these undisputed facts compelled a conclusion of obviousness.