Reversal of Claim Construction on Appeal Abrogates Finding of Validity Even Where Validity Was Not Appealed

The court granted defendants' motion for relief from a prior judgment of no invalidity following remand even though defendants did not directly appeal the validity finding. "The validity of the claims was determined under a claim construction that has been reversed by the Federal Circuit, and this court therefore never considered — and defendants never had an opportunity to argue — invalidity under the claim construction that the Federal Circuit adopted. . . . Because the validity and infringement issues cannot be said to be distinct, it was not necessary for defendants to appeal the validity issue in order for the court to hear the issue on remand."

Lazare Kaplan International Inc. v. Photoscribe Technologies, Inc., 1-06-cv-04005 (NYSD February 15, 2012, Order) (Griesa, J.)

Method for Calculating Medical Codes not Invalid Under Bilski for Claiming Unpatentable Subject Matter

The court denied defendants' motion for summary judgment that plaintiff's patented method for computing medical codes was invalid for claiming unpatentable subject matter. The claims did not satisfy the machine-or transformation test because they (i) "require[d] the use of a general purpose computer for computation, storage, and display [and] these generic functions do not impose meaningful limits on the claims," (the machine prong) and (ii) they "involve[d] . . . manipulating data gathered in a physician–patient encounter and generating a final CPT code [which does not involve] . . . physical and tangible objects" (the transformation prong). Nevertheless, the claims were not invalid because they were not "drawn to an abstract idea." "The [patent-in-suit's] claims are not drawn to an abstract idea. They involve the use of a computer and complex programming and are not drawn to purely mental processes. Prior attempts to solve the coding problems addressed by the [patent] entailed hiring full-time coders who pored over medical records and tomes of information about CPT code criteria to determine the appropriate code. The [patent] claims provide a patentable improvement to the previous methods for determining the CPT codes for a physician–patient encounter. The claims are also subject to meaningful limits. They relate specifically to a physician–patient encounter and involve the determination of a specific type of medical procedure code that is published by the AMA."

Prompt Medical Systems, L.P. v. AllscriptsMisys Healthcare Solutions, Inc., et. al., 6-10-cv-00071 (TXED February 13, 2012, Order) (Davis, J.)

Damages For Infringement of Independent Claim Do Not Serve As Cap On Damages For Infringement of Dependent Claim

The court denied defendant's motion in limine to exclude the value of certain components from the royalty base because "the damages that are awarded from infringement of a dependent claim cannot exceed those that are awarded from infringement of the independent claim from which it is derived.” “In support of its proposition, [defendant] cites only a footnote from Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 n.10 (Fed. Cir. 1989). This Court will decline [defendant's] invitation to extend the dicta in Wahpeton into the promulgation of a rule of law by the Court of Appeals for the Federal Circuit."

University of Pittsburgh v. Varian Medical Systems, Inc., 2-08-cv-01307 (PAWD February 10, 2012, Order) (Schwab, J.)

Plaintiff's Statement Concerning Inappropriate Purpose of Litigation Was Sufficient to Send Unclean Hands Defense to Jury

The court denied plaintiff's motion for summary judgment on defendant's unclean hands defense. "[Defendant] asserts that [plaintiff's] hands are not clean because it brought this lawsuit 'as a business strategy to drain [defendant's] resources and scare away potential customers,' and not because it had 'a good faith basis to believe that [plaintiff] was infringing the patents-in-suit.' . . . [Defendant] relies on [plaintiff's vice-president's] statement that the 'primary goals' of this lawsuit were to divert resources from [defendant] and to prevent potential customers from seriously considering [defendant's] products. The court concludes that is sufficient evidence of [plaintiff's] unclean hands to allow the defense to be presented to the jury."

Abbott Point of Care Inc. v. Epocal, Inc., 5-08-cv-00543 (ALND February 9, 2012, Order) (Smith, J.)

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Bifurcation of Liability and Damages is Not Warranted Where Technology at Issue is Low-Tech

The court denied defendants' motion to bifurcate the trial on liability from damages and willfulness. "Defendants argue that bifurcation is necessary to ensure jury comprehension. The inherent complexity of patent cases, the argument goes, imposes an 'extraordinary burden' on the jury; bifurcation is necessary to break up the case into digestible pieces. That argument is most persuasive where the action involves an esoteric technology. Its persuasive force is much diminished in a case, such as this, where the technology at issue is something as low-tech as ladies' undergarments."

Plew v. Limited Brands, Inc., et. al., 1-08-cv-03741 (NYSD February 6, 2012, Order) (Swain, J.)

Pursuing Litigation After Claim Construction Was Vexatious, Warranting Award of Attorneys' Fees

The court granted in part defendant's motion for attorneys' fees under 35 U.S.C. § 285 and awarded fees beginning from the date claim construction was resolved. "Plaintiffs timely requested reconsideration of the court’s Markman order, timely appealed, and won their appeal, albeit not on a construction implicated in the court’s [order declaring the case exceptional]. Plaintiffs had a right to resolve a claim construction which they believed to be erroneous, even if resolution of that construction did nothing to make their claims of infringement any more meritorious. Having resolved all issues of claim construction, plaintiffs’ persistence in prosecuting a case that was now clearly without merit was vexatious and unjustified."

Cartner, et. al. v. Alamo Group, Inc., 1-07-cv-01589 (OHND February 6, 2012, Order) (Vecchiarelli, M.J.)