We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, November 26, 2012. Brief synopses are presented below.
Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., Case No. 2011-1555 (Fed. Cir. November 15, 2012) (attached).
This case involves a patent for offshore drilling technology that allows a single derrick on a rig to have parallel drilling operations for faster and cheaper oil well drilling. In a previous case related to this litigation, the Federal Circuit had overturned the district court’s summary judgment finding of obviousness, noting that although Maersk showed a prima facie case of obviousness, the summary judgment was improper in view of Transocean’s significant objective evidence of nonobviousness (i.e., secondary considerations).
On remand, the district court allowed the jury to review the prior art references for the purposes of determining obviousness and the strength of the prima facie case of obviousness. The jury verdict was one of patent validity and awarded $15 million to Transocean. The district court then granted Maersk’s motion for JMOL notwithstanding the jury verdict.
The Federal Circuit stated in this case that it was error to allow the jury to reconsider whether the references made the patent at issue obvious because that issue was already decided in the first case. The Court also held that there was no error in allowing the jury to weigh the strength of the prima facie case together against the objective evidence of nonobviousness. The court 1) reinstated the jury verdict upholding the patent as supported by substantial evidence, 2) held that substantial evidence supported the jury’s finding of enablement, and 3) reinstated the jury’s award of $15 million as a reasonable royalty verdict that was supported by substantial evidence.
Ritz Camera & Image, LLC v. Sandisk Corp., Case No. 2012-1183 (Fed. Cir. November 20, 2012) (attached).
SanDisk owns several patents relating to NAND flash memory. Ritz, a retailer that sells flash memory products, filed suit alleging that SanDisk had violated antitrust laws. Ritz contended that SanDisk had fraudulently procured two patents relating to its flash memory products by failing to disclose known prior art and making affirmative misrepresentations to the PTO. SanDisk moved to dismiss the case on the ground that Ritz lacked standing, arguing that Ritz should not be allowed to bring a declaratory judgment action challenging the validity or enforceability of the patents when Ritz has not been sued for infringement.
The district court denied SanDisk’s motion to dismiss stating that direct purchasers are generally permitted to bring antitrust actions and Ritz’s status as a direct purchaser gives it standing to pursue its antitrust claims even if it could not have sought a declaratory judgment of patent invalidity or unenforceability. The Federal Circuit affirmed saying that antitrust standing is not limited by the rules of patent standing.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, November 26, 2012 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 Noelle Attalla by 9 am Monday morning.