Daily Archives: May 6, 2011

Oracle Ordered to Reduce the Number of Patent Infringement Claims against Google

Judge William Alsup of the U.S. District Court in San Fransisco has ordered Oracle Corporation to reduce the number of patent infringement claims against Google, Inc., from 132 to three.  At the same time, Google has been told to narrow its prior art invalidity defenses as well, from hundreds to eight.

Back in August of last year, Oracle leveled seven Java-related patents against Google’s Android software development kit. The patents, owned by Oracle America, are: United States Patents Nos. 6,125,447; 6,192,476; 5,966,702; 7,426,720; RE38,104; 6,910,205; and 6,061,520, originally issued to Sun. The complaint alleges that Google has been aware of Sun’s patent portfolio, including the patents at issue, since the middle of this decade, when Google hired certain former Sun Java engineers.

You Cannot “Game” the Appellate System by Filing a “Protective” Cross-Appeal

Believing that an appellee’s cross-appeal following a favorable judgment was nothing more than an attempt to get the upper hand in the appeal, the U.S. Court of Appeals for the Federal Circuit granted a motion to dismiss a cross-appeal, finding the cross-appeal improper because, if successful, it would not expand the scope of the judgment in appellee’s favor.  Aventis Pharma S.A. v. Hospira, Inc., Case No. 11-1047 (Fed. Cir., Mar. 24, 2011) (Moore, J.).

In separate actions, Aventis Pharma sued Hospira and Apotex for infringement of patents relating to drugs used to treat certain types of cancers.  The cases were consolidated and the district court ruled in favor of the defendants, finding that all the asserted claims were invalid for obviousness and unenforceable due to inequitable conduct.  The district court, however, rejected Apotex’s assertion that some of the claims were invalid for double-patenting.

After Aventis appealed, Apotex filed a “protective” cross-appeal, allegedly aimed at preserving its right to challenge the district court’s double-patenting ruling should the Federal Circuit reverse the invalidity and unenforceability rulings. Subsequently, Aventis asked Apotex to withdraw the cross-appeal. After Apotex refused, Aventis moved to dismiss the cross-appeal.

The Federal Circuit granted Aventis’ motion.  The Court noted that “[a] cross-appeal may only be filed ‘when a party seeks to enlarge its own rights under the judgment or to lessen the rights of its adversary under the judgment,’” The Court noted that parties should not be permitted “to game the system by filing a cross-appeal to obtain the final word: this is neither fair to the appellant nor an efficient use of the appellate process.”

The Federal Circuit rejected Apotex’s argument that Federal Circuit policy is in conflict with other circuits, characterizing other circuits’ allowance for conditional cross-appeals “as a means to raise additional arguments which do not expand the scope of the judgment.” The Federal Circuit noted it offers the same opportunity, albeit in a different form, by “requir[ing] parties to raise such arguments in their primary briefing.”

The court explained that under its precedent “as a general matter … a finding of invalidity means there is ‘no basis for a cross-appeal’ of non-infringement or additional claims of invalidity.”  The Federal Circuit acknowledged that the court has not sua sponte struck every improperly filed cross-appeal, but found that “[t]his infrequent leniency is not an invitation to flaunt our practice and precedent, and the improper use of a cross-appeal directly contrary to our precedent may meet with sanctions.”

Practice Note:    At the Federal circuit, an invalidity decision in a lower court leaves no room for the successful defendant to file a contingent cross-appeal as to infringement or other validity issues.

Claim Construction: Too Much Structure Will Spoil the Brew

In affirming-in-part grants of summary judgment on non-infringement by two separate district courts, the U.S. Court of Appeals for the Federal Circuit reiterated the role of a district court in claim construction is to give meaning to the limitations actually contained in the claims, “not to redefine claim recitations or to read limitations into the claims.”  American Piledriving Equip., Inc. v. Geoquip, Inc., Case Nos. 10-1283, -1314 (Fed. Cir., Mar. 21, 2011) (Linn, J.).

American Piledriving filed suit against Geoquip in the Eastern District of Virginia and separately against Bay Machinery in the Northern District of California alleging that each infringed its patent by selling piledrivers manufactured by Hydraulic Power Systems.   The patent in issue relates to counterweights for “vibratory” piledrivers, which rely on vibrations to drive piles into the ground.   The representative claim recites, inter alia, a limitation requiring “counterweights having a cylindrical gear portion and an eccentric weight portion integral with said cylindrical gear portion, said eccentric weight portion having at least one insert-receiving area formed therein.”

A Markman hearing was held in each case and each of district courts consistently construed the term “integral” to mean “formed or cast of one piece.”

The district courts diverged, however, on their construction of “eccentric weight portion” and “insert-receiving area.”   The California district court construed “eccentric weight portion” to mean “the bottom portion of the counterweight, which extends forward from the front face of the gear portion, containing more weight than the top portion due to its larger mass, including at least one insert receiving area formed therein to receive at least one solid tungsten rod.”   The Virginia district court construed the same term to mean “that portion of the counterweight that extends either forward or rearward from the front or back face of the gear portion such that it shifts the center of gravity radially outward from the gear’s rotational axis.”

With regard to the term “insert-receiving area,” the Virginia district court construed that term to mean “a bore located, at least in part, within the eccentric weight portion that is shaped to hold securely a solid insert member,” whereas the California district court construed the same claim language to mean “a bore formed in the eccentric weight portion of the counterweight, which extends fully through the gear portion and fully through the eccentric weight portion of the counterweight capable of receiving a solid tungsten rod.”

In both the California and Virginia actions, the defendants moved for, and the district courts granted, summary judgment of non-infringement.   The summary judgment grants were based on each court’s constructions of the disputed phrases “integral,” “insert-receiving area” and “eccentric weight portion.”   American Piledriving appealed.

On appeal, American Piledriving argued that the district courts misconstrued these three terms.   The Federal Circuit affirmed the Virginia court’s construction of each of these claim terms, as well as the California court’s construction of “integral” (which was identical to that of the Virginia court).

In upholding the Virginia constructions, the Federal Circuit found that the California constructions imported unnecessary limitations into the construction of “eccentric weight portion” and “insert-receiving area.”   In its analysis, the Court reviewed the claims, the specification and the file history as it related to each of these terms.   With regard to both “eccentric weight portion” and “insert-receiving area,” the Court found that there was no support in the intrinsic evidence for the additional structural limitations imported by the California district court.

The Federal Circuit affirmed both of the district court’s grants of summary judgment of non-infringement with regard to the accused products.